The Leahy-Smith America Invents Act (“AIA”) establishes estoppel provisions prohibiting certain parties from requesting ex parte reexamination subsequent to a final written decision in an inter partes review or post-grant review proceeding. The AIA also expands the scope of information that may be submitted in a patent file and defines how such information may be used by the U.S. Patent and Trademark Office (“PTO”) in ex parte reexamination, inter partes review, and post-grant review.

On August 6, 2012, the PTO issued a final rules package, entitled “Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act,” implementing these post-patent provisions, as well as other miscellaneous provisions of the AIA. The rules, which become effective on September 16, 2012, are summarized below.

Estoppel Attached toEx Parte Reexamination Request

The estoppel provisions of the AIA prohibit a third party, and those in privity with the third party, from filing an ex parte reexamination request after a final written decision has been issued in a post-grant review or inter partes review proceeding that was originally requested by the third party. The final rule, implemented in 37 C.F.R. § 1.510(b)(6), requires a third party’s request for ex parte reexamination to contain a certification stating that the statutory estoppel provisions of inter partes review and post-grant review do not bar the third party from requesting ex parte reexamination. Such a certification does not require the requester to reveal its identity in the ex parte reexamination request, thus permitting the ex parte reexamination request to be made anonymously. The final rule modifies the original rule proposal, which would have required a third party to be identified in the ex parte reexamination request.

Submission of Information to Patent File

The information submission provisions, implemented in 37 C.F.R. § 1.501, permit any person to submit in a patent file at the PTO, a statement, filed by the patent owner in a Federal court or PTO proceeding, in which the patent owner took a position on the scope of any claim of the patent. The submission rule also requires an explanation of how the submitted information is pertinent to at least one claim of the patent. The submission can be filed anonymously.

In response to comments from the public on the rule originally proposed by the PTO, the final rule permits the submission of a written claim scope statement that was initially made outside of a Federal court or PTO proceeding but later filed by the patent owner for inclusion in the proceeding. The PTO’s commentary associated with the new rule also clarifies that the new rule does not apply to claim scope statements filed by the patent owner in an action at the International Trade Commission (“ITC”). Further, the PTO’s commentary specifies that the new rule does not provide for the submission of a patent owner’s claim scope statement directed to claims in a related patent or a related patent application.

Use of a Patent Owner’s Claim Scope Statement in Ex Parte Examination

If a third party submits a patent owner’s claim scope statement and also files a request for ex parte reexamination, the request must explain how the statement is being used to determine the proper meaning of a patent claim. According to the PTO’s rule commentary, however, the PTO may not consider a patent owner’s claim statement submitted pursuant to § 1.501 or the explanation when determining whether to order ex parte reexamination. In making that determination, the PTO will give the claims the broadest reasonable interpretation. The PTO’s commentary further indicates that after reexamination is ordered, the patent owner’s statement and the requester’s explanation will be considered to the fullest extent possible when determining the scope of any patent claim subject to reexamination.