While the district court noted that the decision whether to stay the case during the ex parte reexamination was discretionary, the court also noted that factors to be. The ex parte reexamination was created in 1980 and allowed for a reconsideration of an issued patent in light of new patents and printed publications. If a premature statement or other response is filed by the patent owner, it will not be acknowledged or considered in making the determination, and it will be returned or. In recent days, the pto denied microsofts request in 14 of those cases. Inter partes reexamination bskb post grant proceedings. In 2014, the uspto issued reexamination certificate c1, which confirmed the validity of the challenged claims claims 6, 8 and 9 of the remote power patent following an ex parte reexamination. Patent reexamination speed presents new opportunity patents. Nov 20, 2017 the office also established a new streamlined reexamination option for ex parte reexamination requests that do not exceed 40 pages. If they determine that the prior art raises a substantial new question of patentability, an ex parte reexamination is initiated. Under the new fee schedule, the fee for filing an ex parte reexamination request will be reduced if the request has forty 40 or fewer pages and meets other format requirements. Interview with examiners ex parte reexamination of u. Central reexamination unit commissioner for patents p. In ex parte reexamination, the third party is merely a requester and has no direct input in the reexamination following the submission of that request.
Are the dmv sloths from zootopia reflective of the pace. Ecolab filed a patent infringement action alleging that gurtler infringed ecolabs patent for sanitizing laundry sour. Uspto reexamination trumps federal court opinions of. The number of software patents being challenged through the new ipr. Here is the latest installment of reexamination requests from scott daniels, of reexamination alert and practice center contributor. Fitch even attorneys are wellversed in ex parte reexamination procedures and recognize them as an extension of patent prosecution practice. You dont need to build an ipr offrampit already exists.
Stayed ex parte reexamination in favor of ipr before institution. The uspto aims to have ex parte reexamination completed in a timeline of. New uspto fee schedule increases fees for challenging. The cantor colburn postgrant proceedings team helps clients file challenges with the upto based on prior patents or printed publications. Finally, supplemental examination is a new procedure added in the aia. Where the reexamination request was filed by a third party requester, any statement filed by the patent owner must be served upon the ex parte reexamination requester in accordance with 1. Stayed ex parte reexamination in favor of ipr before. In united states patent law, a reexamination is a process whereby anyonethird party or. Improved speed for overlooked postgrant patent options once upon a time, patent reexamination was the only mechanism to challenge a u. Line spacing doublespaced or 112 spaced, font size 12pt nonscript, and margin requirements apply. E decision on a request for reexamination submitted under 35 u. Ptab finds good cause for staying ex parte reexamination in. Differences between patent reexamination and patent. On may 25, 2011, the federal circuit issued its the long awaited en banc decision in therasense, inc.
Abbott diabetes care requested ex parte reexaminations of dexcom patents directed to membranes for use in implantable sensors, devices and methods for determining analyte levels in vivo, and systems. As such, the reexamination statute restricts a patentees ability to enforce the patents original claims to those that survive reexamination in identical form. United states patent and trademark office ex parte reexamination filing data. Only 70 percent of the electrical, software, and business method reexaminations have. The expanding timelines, among other shortcomings, prevented inter partes patent reexamination from serving as a true alternative to patent. This presentation will address the most recent data on ex parte and inter partes reexamination filing and outcomes, observable trends, recent statutory and regulatory developments that have contributed to those trends, reexamination as a litigation strategy, and how to prepare examinerfriendly reexamination requests.
An ex parte reexamination could be filed by anyone, including the patent owner. The uspto recently published an adjusted fee schedule for certain patent fees. Through its attorneys microsoft requested ex parte reexamination almost thirty avistar patents. Currently, most ex parte reexaminations are finished at the cru in less than two years, after. The ratnerprestia patent re examination guide provides resources for developing patent re examination strategies in multiple technical fields including biotechnology, business methods, chemistry, computers, medical devices, pharmaceuticals, semiconductors, signal processing, and software. To have a patent reexamined, an interested party must submit prior art, in the form of patents. Therasense decision to influence the choice between ex parte vs. Feb 12, 2009 no defendant has been confident enough to ask the pto for a binding inter partes reexamination.
A patent owner who is dissatisfied with the primary examiners decision to reject claims in an ex parte reexamination proceeding may appeal to the board for. Notice regarding options for amendments by patent owner. The major exception to this quick timeline is that the supplemental examination will not be considered complete for amnesty purposes if a snq is raised in a. Ex parte reexamination eprx has been available since 1981 see mpep 2200 and remains available under the america invents act aia. Procedures for reexamination of issued patents began on july 1, 1981, the date when the reexamination provisions of public law 96517 came into effect. Case dismissed after claims upon which lawsuit was. Anyone can request an ex parte reexamination of a patent at anytime during the enforceable period of the patent, which is generally considered to be 6 years past the date of expiration. Standing alone, this denial does not appear to be big news except for the fact that over 95% of requests for ex parte reexamination are granted. Whether styled as a civil action in district court or an appeal in circuit court, both proceedings relate to the same subject. In this post we explore the ptabs recent treatment of a sampling of software related applications on ex parte appeal under the 2019 guidance. Jun 06, 2011 the strategic use of patent reexamination.
District court denies motion to stay pending ex parte. Prior to september 16, 2012, ex parte patent reexamination was the only uspto option for challenging the validity of patents that issued from patent applications filed before november 29, 1999. Citation of prior art and estoppel in reexamination. On march 15, 2019, the office published a notice of a pilot program for mta. Us patent office issues second reexamination certificate. Third parties seeking to challenge preaia patents in the uspto often choose between ipr and ex parte reexamination. Ex parte patent reexamination filings fall by 50% after aia. In other situations such as a successful ex parte reexamination, a patent holder will gain more confidence in the. Patent reexamination speed presents new opportunity. Mar 24, 2014 in its order, the board denied petitioners motion to terminate, or alternatively stay, ex parte reexamination no.
However, mistakes are made by both the patent owner and tpr during the course of the inter partes reexamination proceeding. Reissue and reexamination proceedings intellectual. Apr 28, 2016 ex parte reexam an overlooked way to challenge patents. How to lose an ipr but amend your claims in reexam and keep. Month 3 the central reexamination unit needs to decide whether they will grant or deny the request within three months of the request being made. First introduced as an ex parte proceeding in the 1980s, patent reexamination was expanded to include an inter partes option in 1999. An alternative to amend claims in an invalidated patent is a patent ownerfiled ex parte reexamination, which has required timelines to grantdenial of request for reexamination and to first office action 3 months each. Any determination to initiate ex parte reexamination under this section will become a part of the official file of the patent and will be mailed to the patent owner at the address as provided for in 1. All are waiting to let reexamination counsel, on behalf of defendant dice electronics, llc, take a shot at defeating affinity labs. B august 30, 2017, entering adverse judgement on the original patent claims because those claims no longer existed in light of patentably distinct claims obtained by the patent owner in a concurrent ex parte reexamination. The ratnerprestia patent reexamination guide provides resources for developing. In united states patent law, a reexamination is a process whereby anyonethird party or inventor can have a u.
For the most part, as its name implies, ex parte reexamination proceedings involve only the patent owner and the uspto. Appealing bpai rejections in ex parte reexaminations. Ex parte reexamination can provide expeditious and costeffective relief. Ex parte reexamination by a patent examiner is a straightforward way to challenge a patent. An inter partes requester may also comment on the patent owners response to an office action on the merits. Reexaminations finnegan leading intellectual property. Provision added for both inter partes and ex parte reexamination. For an ex parte reexamination, the requester is effectively silenced after the request is made, even in the face of obvious error, because the ex parte requester is not allowed to submit additional prior art. The correspondence is strictly between the examiner and the patent owner. Case dismissed after claims upon which lawsuit was initiated were cancelled during re examination. Month 0 a request for an ex parte reexamination is made. Normally requests from outside the office that the director undertake reexamination on his own initiative will not be considered. September 30, 2018 1 total decisions on requests does not include requests that have been vacated or are pending. A third party has limited involvement in both reissue and ex parte reexamination, but still has some options during each proceeding.
No risk for me ex parte reexamination sinks motion to stay. Is there value to ex parte patent reexamination after the aia. Moreover, a patentee can appeal a reexamination result to the board of patent appeals and interferences and to the court of appeals for the federal circuit. A request for ex parte reexamination can be filed at any time during the enforceability of a patent. In fact, after a request is filed, a thirdparty requester is precluded from further involvement unless the patent owner files a statement seeking to rebut the requesters assertions of snq. Ex parte reexamination is a uspto proceeding to challenge the validity of one or more claims of a patent. The uspto aims to have ex parte reexamination completed in a timeline of fewer than two years. An ex parte reexamination the patent was requested on january 20, 2012, and a reexamination. September 30, 2017 1 total decisions on requests does not include requests that have been vacated or are pending. The respective timeline and stage of each proceeding the statutory. Pilot program for waiver of patent owners statement in. Reexamination currently ongoing, and the office considering making the pilot permanent. Choosing between ex parte and inter partes reexamination.
Patent reexamination fee changes and deadlines update. Under the aia, ex parte reexamination proceedings, which have unique rules and procedures, remain an important option to consider. After the board granted the reexamination request, patent owner filed. First, section 6 of the aia to provides for an estoppel that may attach to the filing of an ex parte reexamination request subsequent to a final. History biological patents software patents list of patent law cases v t e. Ex parte reexam an overlooked way to challenge patents. Order denying motion to terminate ex parte reexamination. A request for ex parte reexamination can be filed by either the patent owner or a third party. Thus, ex parte reexamination is the best tool for preempting prior art issues which would otherwise be addressed during litigation. Shortbus flashers sought the stay because it had filed a request for an ex parte reexamination of the patent being asserted in the litigation by plaintiff protroll, inc. District court denies stay for ex parte reexamination. Since the start of ex parte reexamination in 1981, there have been over nine thousand requests that the pto revisit issued patents, averaging over five hundred annually in recent years. The ex parte reexamination requested by garmin has barely entered its merit stage, and there is a strong likelihood that it may not finish until well after the current trial date.
As to requests for ex parte reexamination, uspto filing costs will be greatly affected by the final rules. Appealing bpai rejections in ex parte reexaminations february 16, 2010 patent aia trials, ipr, uspto director dennis crouch i have to admit some prior confusion as to the rules governing appeals from adverse bpai decisions during an ex parte reexamination. Timing of the patent reexamination request, even the type of reexamination i. The federal circuit explained that ex parte reexamination is a curative proceeding that is meant to correct or eliminate erroneously granted patents. Motion to stay patent case pending reexamination denied. Of course, if things do not go well at the pto, each defendant in turn can file a request for ex parte reexamination. Ex parte reexamination timeline patent reexamination guide. Rim challenge of two simpleair patents among the reexamination requests filed week of 5911. Further, ex parte reexamination is conducted by patent examiners technical experts within the usptos central reexamination unit cru. Ratnerprestia patent reexamination guide ex parte timeline. Ex parte reexamination permits a third party to challenge patent claims by filing a request that presents a substantial new question of patentability. Patent reexamination was first selected as a topic for presentation at the. Will ex parte reexamination become a tool for patent owners.
Formulating the request in light of copending or threatened litigation 114 1. Edna moved to stay the case pending the outcome of the reexamination. Ex parte reexaminations are initiated by members of the public, but once said members submit their request, they no longer actively participate in the proceedings. From 1981 through the end of 2007, the office of the patent commissioner has granted over ninety percent of these ex parte reexamination requests. Ptab ex parte patent proceedings attorneys knobbe martens. In some cases, the differences between reexamination and reissue may present a clear choice for the patentee. In response to the office action mailed june 4, 2014 in connection with the abovereferenced ex parte reexamination of u. Sterne kesslers patent office litigation team has emerged as a dominant force, representing both petitioners and patent owners in a wide range of the usptos technology centers biotech and chemical, electrical, and mechanical. D if ordered, the actual reexamination proceeding is ex parte in nature. The reexamination request was filed on september 15, 2012 and had already undergone.
Dexcom, a leader in continuous glucose monitoring systems, was successfully defended by the firm in numerous ex parte reexamination proceedings before the uspto. Appealing bpai rejections in ex parte reexaminations patentlyo. Ex parte reexamination is a tool that allows a patent owner a request for the. In supplemental examination, similar to ex parte reexamination, you submit new prior art to the patent office and ask them to consider it. Requester strategies for obtaining a fast and favorable. With certain timelines, the patent owner files a response to the office action and the tpr can respond to any response filed by the patent owner. Mar 11, 2015 district court denies motion to stay pending ex parte reexamination where defendant was competitor of plaintiff and chose ex parte reexamination over inter partes reexamination by stan gibson plaintiff ecolab inc. Ex parte reexamination is a tool that allows a patent owner or a third party to lodge a request for the united states patent office uspto to reexamine an alreadygranted patent based on other patents and publications that they bring to the usptos attention.
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