Senate Proposal Seeks Separate Reexamination Track

Last year, I pointed out that the Central Reexamination Unit (CRU) had extra capacity since inter partes patent reexamination filings were abolished with the passage of the America Invents ACT (AIA) . And, given the adjudicatory mission of the Patent Trial & Appeal Board (PTAB), and the examination depth of the CRU, I recommended that perhaps there could be some joint cooperation between the entities to more effectively review amendments submitted in AIA trial proceedings. Specifically, I envisioned a "Motion to Reissue" that would extend the PTAB 12 month trial schedule another 6 months to allow for a truncated reissue proceeding. This reissue phase would be performed by the CRU with results returned to the PTAB within the 18 month trial schedule. In that same post, I recommended some other changes to the motion to amend process such as allowing claims be submitted in an appendix (since adopted by the Board) and a change to Rule 42.73(d)(3).  

A Senate proposal floated last week proposed to change Rule 42. 73(d)(3) and, rather than reissue, add a reexamination component to substitute for the existing motion to amend process at the PTAB.

The summary of the proposed legislation (here) explains that:

Examination of an amendment. Following institution, a patentee will have the option to request that the PTO examine proposed amendments to one or more claims on which the PTAB has institute review. The PTO will then examine any such proposed amendments for patentability, using the existing model for reexamination of issued patents. The original claim on which the IPR/PGR was instituted will remain under the review of the PTAB, and a request for amendment will not be deemed an admission of unpatentability.

Interaction between examination and IPR/PGR. The examination of proposed amendment(s) may not be stayed without the patentee’s consent, and the examination and the instituted IPR/PGR will proceed separately. In the context of examining a proposed amendment, however, the PTO shall consider documents from the relevant IPR/PGR, including the petition, the evidence, prior art and arguments submitted by the parties, the institution decision of the PTAB, and any final written opinion if issued during the examination of the request. This will allow the PTO to ensure that different outcomes do not occur for substantially-similar claims.

There are several problems with this proposal. First, unlike the PTAB proceeding which has a time limit, patent reexamination has a best-effort, or "special dispatch" brand of timeliness.  Assuming most such requests will be filed 3 months into a 12-month trial schedule, if the typical first action/final action system is used (as proposed), the reexamination track is likely to conclude second in time, and will be, necessarily, ex parte. (proposed legislative text here)

A dual-track system would be inefficient to say the least, not to mention, one-sided.  For such a proposal to make sense it would have to be integrated with the PTAB trial schedule, and provide an opportunity for a petitioner submission.  Rather than a petitioner submission, the proposal suggests providing an exception to 315(b) to allow for subsequent IPRs should any amended claims exit the reexamination phase. Inefficient

Presumably patent reexamination was selected over patent reissue as the scope of patent reexamination, and amendment controls, are akin to that used by the PTAB at present.  This makes some sense, my suggestion of a motion for reissue would avoid the need to change 315(b) as, if the reissue were successful, a new patent would issue. Also, fulsome patentability searches are absent in patent reexamination (where the submitted art controls); not so in patent reissue. The Senate proposal would seem to limit the art to that already of record. Thus it is not clear if a new search would even be done under existing reexamination practices.

Finally, patent reexamination or patent reissue are already options for patentees to file prior to a final written decision of the PTAB, and many patentees are doing exactly that. The fly in the ointment with obtaining claims this way is that if the final written decision comes first, as I pointed out a year ago, 42.73(d)(3) is the real problem.  The Senate proposal suggests changing this so that potential estoppel is dropped. The proposed language is:

37 C.F.R. 42.73(d)(3)(3) Patent applicant or owner. A patent applicant or owner will be precluded from obtaining in the patent challenged in the inter partes review, or any patent claiming priority therefrom, or with a common priority claim, a claim canceled under section 316(d)(1)(A) or a claim that is not patentably distinct over the prior art on the basis of which a challenged claim was finally refused.

Obviously, any claim obtained later would necessarily need to be "distinct" over earlier applied prior art as a matter of common sense.  So, 42.73(d)(3) as proposed, is essentially toothless. This is a far cry from the current text that estopps a patentee from obtaining claims after a claim refusal/cancellation that are patentably indistinct to the cancelled claims, as opposed ot the art. In my view, such a change is inevitable as this rule will create havoc on many valuable portfolios going forward. Stakeholders have yet to appreciate the true potential of this rule

In short, while these ideas could be salvaged to present an interesting hybrid solution, the PTAB has recently recalibrated amendment operations to moot many of the earlier complications.  This proposal, like many of the PTAB legislative proposals have been beaten to the punch by the PTAB's own rule changes and informative decisions.