3. Supplemental examination is essentially a 3-month expedited decision on a patent-owner request for review based on prior art and any other issues of patentability, such as patentable subject matter and indefiniteness under 35 U.S.C. 101 and 112. If approved, the request is followed by an ex parte reexamination. There is no provision for third-party participation in any manner in a supplemental examination proceeding. Supplemental examination can be useful to prevent later-filed claims of invalidity on inequitable conduct grounds arising out of the owner’s failure to submit the information during prosecution. Supplemental examination can therefore be used cleanse the record of inequitable conduct. But beware, exceptions (35 U.S.C. 257(c)(2)(A) and (B)) apply to the cleansing when this procedure is attempted after a lawsuit brings attention to the inequitable conduct. Supplemental examination might also be used by potential plaintiffs who anticipate an unfringement action but want to prevent prospective defendants from arguing in court that the best references were not considered by the USPTO. Finally, supplemental examination might be considered when a patent owner wants to obtain reexamination of his patent without having to first admit that there is a question about its patentability.
4. Transitional Program (aka covered business method patent review) is an 8 year program starting 16-SEP-2012 and ending 16-SEP-2020. It is available to any person who has been sued for infringement of a business method patent or has been charged with infringement under that patent. It may be used to challenge a business method patent. The challenge may be on any basis including prior art, patentatability and indefiniteness. It is for any patent involving a “method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” It is not available for patents that recite a technological feature that is novel and unobvious over the prior art and the invention solves a “technical problem using a technical solution.” This program may not be used during time a post grant review petition could be filed, to wit, within 9 months after issuance of a patent.
5. Post Grant Review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised for unpatentable subject matter, previously invented by another, violation of the on-sale bar and public use, obviousness over pior art, indefiniteness, written description deficiencies, or enablement deficiencies. Post Grant Review, with limited exceptions, is applicable to those patents issuing from applications subject to first-inventor-to-file provisions of the America Invents Act (AIA). The first-inventor-to-file provision of the AIA became effective on 16-MAR-2013. Post grant review process begins with a third party filing a petition within 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition. A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The petitioner may not have filed an invalidity action and the peition is filed no more than 1 year after the peititioner was served with an infringement complaint.
6. Inter partes reexamination is a procedure that is no longer available, but had been used for patents issued after 29-NOV-1999 and until 16-SEP-2012. This procedure ceased being available as of 16-SEP-2012.Costs and Changes as of 18-JAN-2018. This paragraph summarizes the federal register notice on fees as of 18-JAN-2018. Attorney fees are billed at $250 per hour and fixed attorney fees are available upon request.
- Ex parte reexaminations. Expect total costs to be $20,000 – $45,000. For filing an ex parte request for reexamination, the USPTO filing fee is $12,000 for a large entity, $6,000 for a small entity, and $3,000 for a micro-entity. If the USPTO denies the request, $3,600 will be refunded for a large entity, $1,800 for a small entity and $900 for a micro-entity. So, for a denied request, this leaves the net cost at $8,400 for a large entity, $4,200 for a small entity, and $2,100 for a micro-entity. Other filing fees may apply, for example for more than 20 claims or for filing a brief.
- Inter partes review. Expect total costs to be $100,000 – $200,000. USPTO filing fees are a minimum of $30,500 to begin the process. This includes a USPTO petition filing fee of $15,500 for up to 20 claims. In addition, the USPTO has a per claim fee of $300 for each claim requested for review in excess of 20. These fees will not be returned or refunded to the petitioner even if the review is not instituted. The $30,500 also includes a USPTO an inter partes review post-institution fee of $15,000, for a review of up to 15 claims. This $15,000 fee would be returned to the petitioner if the Office does not institute a trial. In addition, the USPTO a per claim fee of $600 for review of each claim in excess of 15 during the post-institution trial. The excess claims fees would be returned if review of l5 or fewer claims is instituted.Example: the expected USPTO fee if a petitioner requests inter partes review of 52 claims, the petitioner would pay $44,200 ($15,500 plus 32 [52 minus 20] times $300 equals $36,100; plus $15,000 plus 37 [52 minus 15] times $600 equals $37,200; for a total of $52,700). If the petitioner seeks review of 52 claims, but the USPTO only institutes review of 40 claims, the USPTO would return $7,200 (it did not institute review of the 41st through 52nd claim for which review was requested). Alternatively, if the review is not instituted at all, the Office would return the entire $37,200, which includes the fee for claims over 15 and the base $15,000 post-institution fee.Five years ago, in its 2012 Federal Register notice (77 Fed. Reg. 7041) on the costs, the USPTO estimated attorney fees: “the Office estimates that the cost of preparing a petition for inter partes review would be $46,000 . . . [and additionally] for the first patent owner reply and the third party statement is $29,000,” for a total average attorney fee of $75,000. For the patent owner, the USPTO estimates “that filing a patent owner preliminary response to a petition for review would cost more than the initial reply in a reexamination, an estimated $34,000.” Persons already involved in a lawsuit take notice that an inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner is served with a complaint alleging infringement of the patent. This procedure is not available to the patent owner and the petitioner may not have previously filed an invalidity action in court challenging the patent. The standard the USPTO will use to grant this requiest is that the petitioner has at least a 50% chance of success.
- Supplemental examination. Expect total costs to be $30,000 – $75,000. For filing a supplemental examination request, the USPTO filing fee is $16,500 for a large entity, $8,250 for a small entity and $4,125 for a micro-entity. If the USPTO denies the request, $12,100 will be refunded to a large entity, $6,050 to a small entity, and $3025 to a micro-entity, leaving a net cost for the supplemental examination request of $4,400, for a large entity, $2,200 for a small entity, and 1,100 for a micro-entity.
- Transitional Program. Expect costs to be about 75% of the costs for inter partes review. The USPTO filing fees for filing a petition for covered business method patent review are: $30,000 to request review of 20 or fewer claims and $250 for each claim in excess of 20 for which review is sought. Additional claims fees of $400 per claim in excess of 15 claims are charged when and if it proceeds to trial. The USPTO estimates that the attorney fees “for preparing a petition for covered business method patent review would be $61,333.” In addition, “The Office estimates that the preparation and filing of a patent owner preliminary response would [involve attorney fees estimated to] . . . cost $34,000.” The USPTO has set a per claim fee of $550 for review of each claim in excess of 15 during the post-institution trial. The entire fee would be returned to the petitioner if the Office does not institute a review. The excess claims fees would be returned if review of l5 or fewer claims is instituted.The standard the USPTO will use to grant this request is that the petitioner has greater than 50% chance of success. There are no small entity fees for the transitional program.Example: a petitioner seeking post grant review of 52 claims would pay $58,350 ($12,000 plus 32 [52 minus 20] times $250 equals $20,000; plus $18,000 plus 37 [52 minus 15] times $550 equals $38,350; for a total of $58,350). If the petitioner requests review of 52 claims, but the Office only institutes review of 40 claims, then the Office would return $6,600 (it did not institute review of the 41st through 52nd claims for which review was requested). Alternatively, if a review is not instituted at all, the Office would return the entire $38,350 for claims over 15, as well as the base $18,000 post-institution fee.
- Post grant review. Expect the fees to be the same as for the Transitional Program.
Additional Fees. Additional costs levied by the USPTO will apply. Chief among them is the cost of filing a petition in a reexamination proceeding equaling $1,930.00 (e.g. a petition to extend the period for response by a patent owner; a petition to accept a delayed response; and a petition for correction of inventorship.) If a non-patent document cited in the filing is between 10 and 50 pages, then an additional fee of $170 is applied. For each additional 50 pages, $280.00 is assessed.
Stats. In the period 1981 to 2011, there were 11,782 ex parte reexamination requests. Of the requests made, 92% were granted reexamination. Of these, 8578 had been decided. Of these, the patents were either modified (66%) or completely revoked (11%). It takes on average about 26 months to complete an ex parte reexamination. It should take about 12 months to complete an inter partes review.
In the period 1999 to 2011, there were 1389 inter partes reexamination requests. Of the requests made, 95% were granted reexamination. Of these, 305 had been decided. Of these, the patents were either modified (45%) or completely revoked (44%). It takes on average about 36 months to complete an inter partes reexamination.
The conclusions: ex parte proceedings have been successful at altering the claims and inter partes proceedings have been far more successful at revoking patents.
See also the related discussion of patent reissue, which is a procedure used to correct an issued patent.
Who Can Ask for Reexamination? Anyone can request an ex parte reexamination, an inter partes reexamination or an inter partes review. There are limits as to when an inter partes review may be requested, as discussed above. An ex parte reexamination may be requested at any time during the period of enforceability of the patent.
How is it Done? A person files the request, explains the issues and submits the supporting materials as required by the Patent Office. The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.
Factors to consider in choosing ex parte reexamination or supplemental examination. Supplemental examination is likely to be more expensive but has benefits for a patent owner as compared with a request for ex parte reexamination. In filing a reexamination request, the patent owner has to first convince the Patent Office that his patent has patentability issue based on prior art. In contrast, for supplemental examination, the patentee may identify prior art or other documented legal issue (such as inequitable conduct in having failed to bring known prior art, or public uses to the attention of the Patent Office) that should be considered. The Patent Office then decides if the submitted request raises any substantial new questions of patentability. This means that the scope of supplemental examination is much broader because it can cure more ills in patent validity, and patentees can avoid making statements that can later be held against the patentee. Furthermore, under supplemental examination, if the Patent Office conducts a supplemental examination and concludes that there is no substantial question of patentability raised by the request then, the Patent Offices will state this in an official document, a “supplemental examination certificate,” that can be used in a court case to prove that there is no patentability issue associated with these facts. For an ex parte reexamination, the Patent Office does not issue any certificate, it simply denies the requested review, which can be much less persuasive with a judge or jury.
Motivations for Reexamination and Supplemental Examination.
- A third party might seek a reexamination to call attention to prior art it has discovered that could affect the grant of a patent This is often a defensive move by someone to void a patent in the Patent Office rather than face a lengthy, more expensive infringement action in Federal Court.
- A patent owner or alleged infringer may want to “stay” litigation pending the less expensive reexamination process before the Patent Office. Timing of the filing of the reexamination could be critical the practicality of this tactical move.
- A patent owner may find a prior art reference and recognize that he needs to narrow the claims in his original patent. He might then submit a request to amend his claims to specifically avoid the prior art. It should be noted that the scope of the claims may not be enlarged in a reexamination or supplemental examination proceeding. On the other hand, in a reissue proceeding, a patent owner may enlarge his claims to claim more territory based upon what he originally disclosed in the specification, but only if he does so within the first two years after patent issuance. Enlarging a patent claim may only be proposed during the first two years after the patent issues in a reissue proceeding. After that, only narrowing amendments may be proposed.
- The burden of proof is less at the PTO. For example, an examiner in a reexamination may rely on a teachng in prior art patent and there is no need for the examiner to establish that the disclosure of the patent is enabling, that is, that the teaching works as taught in the reference. The presumption is in favor of the teaching being enabling. So, the patent owner must prove it is not enabling to overcome the reference. This presumption of enablement applies to both the claimed and the unclaimed subject matter in the prior art patent. However, in a lawsuit, the presumption is that the accused infringer must show that an allegedly anticipatory prior art patent is enabled, the patent owner burden is less because he doesn’t have to show it is non-enabling before the infringer shows it is enabling.
- A patent owner might seek changes to the claims in an issued patent either to get around prior art subsequently discovered or to correct claims that did not properly cover the invention. The patent owner may make the reexamination request by presenting the prior art, identifying the claims in question, and proposing an amendment. However, in most such circumstances, a patent reissue application would probably offer more flexibility to the patent owner.
- Licensees can challenge a patent via the reexamination processes.
- Others likely to use the reexamination process include potential licensees, infringers, potential exporters, patent litigants, interference applicants, and International Trade Commission respondents.
Anonymity. A request for ex parte reexamination can be made in a manner to keep secret the actual real client in interest. However, for an inter partes proceeding, the filing of the request must include a statement identifying the real party in interest. Supplemental examination may only be requested by the patent owner.
Ramifications for Infringement. A competitor may have examined an original issue patent and concluded that it is invalid based on prior art that it had identified. Proceeding ahead, after opinion of counsel on invalidity, the competitor may feel that he can overcome any challenge of infringement. However, even if the original issue patent is invalid based on the newly discovered prior art, that does not preclude the patentee from seeking reexamination of his patent to narrow the claims and overcome the prior art, possibly placing the competitor in an infringing position.
What is a Competitor to Do? A competitor needs to weigh the risks before acting. If a patent reexamination and reissue proceeding newly creates an infringement situation for a competitor, then a finding of infringement on a substantially revised claim can only be found from the date of the reissued patent. Of course, if infringement is based on a claim that is substantially the same as it was in the originally issued patent, then infringement can be found from the date of issuance of the original patent. The law also permits a court to protect an innocent competitor’s existing inventory manufactured before the reissue date. But a reasonable royalty might be required for the patent holder.
Limitations? Reexaminations are based only on printed publications and issued patents. If other evidence of prior art exists, it is not considered. So, in those instances a lawsuit is needed. Once challenged and sustained, a patent becomes entitled to greater deference of validity. Unlike a lawsuit, there is no possibility of settlement which terminates the proceeding. Also after the conclusion of the reexamination proceeding, the party who challenged the patent may not bring any lawsuit, or other proceeding, challenging the patent by raising any issues that were, or could have been, raised in the reexamination proceeding.
Similarly, in inter partes review, the “petitioner, or real party in interest or privy of the petitioner” initiating an inter partes review proceeding is estopped (legally precluded) from subsequent proceedings in the United States Patent and Trademark Office on “any ground that that petitioner raised or reasonably could have raised” during the inter partes review proceeding.
How long does it take? An ex parte reexamination proceeding is conducted with “special dispatch.” This typically means it will take 2-3 years. The new inter partes review proceeding is supposed to be concluded within a year from when the Patent Trial and Appeal Board grants the petition because “there is a reasonable likelihood that the petitioner will prevail as to at least one of the claims.” The Patent Trial and Appeal Board is expected to make this decision not later than 6 months after the filing of the petition. This means that it will probably take the Patent Trial and Appeal Board at least 18 months after filing the petition to render a decision, assuming it doesn’t deny the petition.
Benefits of inter partes over ex parte. Inter partes review will take on average about 18 months after filing the petition and it permits active participation of the requester in the review process. It can be exasperating when the examiner ignores obvious prior art that should be cited to make a complete rejection, for example, prior art previously cited in the file wrapper, but not raised again in the request. With inter partes reexamination the requester has the right to submit additional prior art at specific moments in the reexamination. Under 37 C.F.R. §1.948–
- “(a) After the inter partes reexamination order, the third party requester may only cite additional prior art as defined under § 1.501 if it is filed as part of a comments submission under § 1.947 or § 1.951(b) and is limited to prior art:
- “(1) which is necessary to rebut a finding of fact by the examiner;
- “(2) which is necessary to rebut a response of the patent owner; or
- “(3) which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim.”
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.
An inter partes requester may also comment on the patent owner’s response to an office action on the merits. 37 C.F.R. §1.947 provides–
- “Each time the patent owner files a response to an Office action on the merits pursuant to § 1.945, a third party requester may once file written comments within a period of 30 days from the date of service of the patent owner’s response.”
In addition, 37 C.F.R. §1.951 allows an inter partes requester to comment on a patent owner’s comments on issues raised in an office action closing prosecution. These comment opportunities are not available to an ex parte requester.