Revised Rule on Anonymous Requests Subject to Practitioner Interpretation
The estoppel provisions of Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP) will impact related court proceedings involving the same patent, and USPTO validity proceedings relating to the same patent.
The aspect of the IPR/PGR estoppel that applies to USPTO proceedings is codified below:
315 (e)(1) Estoppel (applies to IPR; 325(e)(1) codifies the same for PGR & TPCBMP)
PROCEEDINGS BEFORE THE OFFICE- The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
Taking the example of 315(e)(1) estoppel, this estoppel applies not only to a subsequent request for IPR from the same requester (or privies), but to any “office proceeding.” The primary USPTO proceeding that will be impacted by 315(e)(1) will be ex parte patent reexamination (EXP). This is because, by definition, a Post Grant Review (PGR) can only be conducted prior to an IPR. Likewise, inter partes reexamination (IPX) will no longer be an option in a few weeks, ending on September 16th. While theoretically there may still be some IPX proceedings that are being “maintained” by the time the first IPR is concluded, it is more likely that the Patent Trail & Appeal Board (PTAB) would consolidate or stay such parallel Office proceedings. (325(e)(1) will not impact office proceedings for PGR for some years, but will apply in the short term to TPCBMP)
As pointed out previously, in many cases EXP is requested anonymously. (MPEP 2213). To account for this practicality the USPTO issued proposed rules requiring that anonymous filers disclose their identity to the Office so the applicability of estoppel could be assessed relative to EXP filers. In the final rules issued this past Monday the USPTO dropped the identity requirement in favor of a simple practitioner certification; but is the final rule enough to protect Patentees from harassment?
In the previous Notice of Proposed Rulemaking for Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act (here), the Office proposed the following rule to track potential EXP estoppel, 37 C.F.R § 1.510(b).
(6) A certification that the statutory estoppel provisions of both inter partes review (35 U.S.C. 315(e)(1)) and post grant review (35 U.S.C. 325(e)(1)) do not prohibit the ex parte reexamination.
(7) A statement identifying the real party(ies) in interest to the extent necessary to determine whether any inter partes review or post grant review filed subsequent to an ex parte reexamination bars a pending ex parte reexamination filed by the real party(ies) in interest or its privy from being maintained.
In proposing 510(b)(7), the USPTO explained that those filers wishing to remain anonymous, were to (1) Submit the statement identifying the real party(ies) in interest as a separate paper; (2) title the paper as a statement identifying the real party(ies) in interest; (3) request in the paper that the Office to retain the paper in confidence by sealing it; and (4) include, in a clear and conspicuous manner, an appropriate instructional label designating the statement as a non-public submission, e.g., NOT OPEN TO THE PUBLIC FOR OFFICE USE ONLY. The Office will then maintain the real party(ies) in interest statement as a sealed, non-public submission.
Comments to the proposed rule criticized the “sealed submission” provision as a strong disincentive to those filers wishing to protect their anonymity. That is to say, the proposed mechanism for maintaining anonymity was not viewed as being very secure. In the final rules issued this past Monday, the USPTO dropped the requirement to identify the real party in interest. The USPTO explained that 510(b)(7) was not adopted and that instead, the Office would simply rely upon the practitioner certification of 510(b)(6).
Generally speaking, I agree that 510(b)(7) was not a very robust mechanism for protecting anonymity, and thus should have been dropped. However, I am not sure the final rule accounts for the reality of high stakes patent disputes.
First, I don’t see the need at all for a certification unless the subject patent has been through an IPR/PGR/TPCBMP.
Second, assuming the patent has been the subject of an unsuccessful PTAB challenge, and as demonstrated recently in the case of In re Baxter, there will a significant incentive to continue a reexamination attack. Where significant commercial interests are at stake, practitioners often interpret privy/real-party-in-interest quite “creatively.” Take the recent example of inter partes patent reexamination 95/001,893 (here). In that filing, a second reexamination filing of a wholly owned subsidiary of the parent company (that filed the first request), were both being sued on the same patent. In submitting the second filing, the subsidiary took the position that it was not in privity with the parent (despite sharing a CEO); not surprisingly, the USPTO vacated the filing, determining that the two filers were in privity for purposes of 317(a).
Under final rule 510(b), the USPTO has stated that [i]f the Office becomes aware of facts that call the certification into question, the Office will determine, on a case-by-case basis, whether the request for ex parte reexamination is prohibited by statute. Yet, it is unclear how the Office would ever become aware of such facts in an anonymous filing. For example, the above filing, if filed anonymously as an EXP after an unsuccessful PTAB challenge, would have undoubtedly been permitted to proceed under the new, final rule.