IP Alerts

IP Alert
IP Alert: Citation of Patent Owner Statements and Application of Estoppel to Ex Parte Reexamination

September 20, 2012

The Leahy-Smith America Invents Act (AIA) expands the scope of information that third parties may cite in a patent file to include written statements of a patent owner filed in a proceeding before a federal court or before the U.S. Patent and Trademark Office (USPTO). The AIA also provides for the application of the estoppel doctrine to the filing of an ex parte reexamination request after a final written decision in an inter partes review or post-grant review proceeding.

Effective September 16, 2012, the USPTO issued final rules to implement miscellaneous post-patent provisions of the AIA. The final rules address the procedure for submitting patent owner claim scope statements to the USPTO, and also address the estoppel effect of an inter partes or post-grant review proceeding on the subsequent initiation of an ex parte reexamination proceeding. These rules also effectuate several rule amendments to conform certain existing rules to other rules changed after the AIA.

Written Statements of Patent Owners

The intent of this underlying provision of the AIA is to limit a patent owner’s ability to advance different, and possibly inconsistent, positions on the same patent.

Under the USPTO’s implementing rules, any person, including the patent owner, may file with the USPTO a written statement of the patent owner if the patent owner filed the statement in a proceeding before a federal court or before the USPTO and took a position on the scope of any claim of the patent (37 CFR § 1.501(a)(2)). The submission must have been made by the patent owner in a USPTO or court proceeding; statements made by the patent owner in other contexts (such as before the International Trade Commission) do not qualify.

If a person submits a patent owner statement, the statement must identify the prior proceeding in which the patent owner filed the statement and must be accompanied by other documents, pleadings, or evidence from the proceeding that address the written statement in order to provide any necessary context (37 CFR §§ 1.501(a)(2), (3)). This accompanying information must be redacted, if necessary, to remove confidential information that is the subject of a protective order (37 CFR § 1.501(a)(2)).  Further, the submission must include an explanation of the pertinence of the patent owner statement to at least one claim of the patent (37 CFR § 1.501(b)(1)). The written submission may be made anonymously, but must be accompanied by a certificate showing service on the patent owner (37 CFR §§ 1.501(d), (e)). The certificate of service may be provided by a registered practitioner without disclosing the identity of the real party in interest.

Such submission will not be used in determining whether to initiate a post-patent proceeding, such as an ex parte reexamination (37 CFR §§ 1.515, 1.552). Further, although there is no specific mechanism for filing a response to a submission, the patent owner may file its own patent owner claim scope statement. In other words, after a third party files a submission, the patent owner may choose to file its own submission citing the same patent owner claim statement and including the patent owner’s own explanation of the pertinence of the statement.

Estoppel May Apply to Bar Initiation of Ex Parte Reexamination Proceedings

As discussed in more detail in other recent alerts, the AIA includes a provision for estoppel after inter partes review and post-grant review.

In the context of USPTO proceedings, estoppel bars a petitioner in an inter partes or post-grant review of a patent claim from subsequently requesting a proceeding before the USPTO with respect to that claim on any ground that the petitioner raised or reasonably could have raised (35 U.S.C. §§ 315(e)(1), 325(e)(1)). A third-party requester in an ex parte reexamination proceeding must certify that these statutory estoppel provisions do not bar the third party from requesting ex parte reexamination (37 CFR § 1.510(b)(6)). 

Although a certification is required, the third-party requester is not required to disclose its identity upon the filing of the request for ex parte reexamination. Instead, the third-party requester may file the request anonymously by utilizing the services of a registered practitioner. In that case, by submitting the request on behalf of the real party in interest, the practitioner certifies that the real party in interest is not estopped from filing the request.

The estoppel provisions apply to bar a request to initiate ex parte reexamination after a final decision in a post-grant review or an inter partes review. They do not, however, apply to reexamination proceedings that are pending at the time of the final decision.

For more information on these provisions of the AIA and implementing rules, please contact Fitch Even partner Rudy I. Kratz.

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