Thursday, September 2, 2021
After an inter partes review (“IPR”) is instituted, a apparent buyer may move to alter challenged claims to affected the above-mentioned art. However, there are additionally addition paths to alteration claims over the above-mentioned art alike afterwards an IPR has been instituted. For example, the US Apparent & Trademark Office (Office) has itself explained that a apparent buyer may book a copy appliance or a appeal for ex parte reexamination. Timing, however, is important in both cases. The Office will accede a copy appliance or a appeal for reexamination any time before either (1) the Office issues a balloon affidavit cancelling all claims in a apparent or (2) the Federal Circuit issues a authorization acknowledging a accommodation award all claims invalid. As continued as the copy appliance or reexamination appeal is filed afore those events, apparent owners can booty advantage of these processes before, during, or alike afterwards an IPR proceeding after-effects in a final accounting decision. Here we accommodate some added advice for apparent owners because means to alter claims that are challenged in IPR by filing a copy appliance or requesting reexamination.
The Office and the Federal Circuit accept accustomed that the copy affirmation beneath 35 U.S.C. § 251 because of an “error” in the issued apparent is annoyed by a apparent owner’s abortion to ahead present narrower claims. As such, if a apparent buyer seeks narrower claims in a copy than those originally issued, a copy appliance can be pursued.
Once filed, the copy appliance gain through assay in abundant the aforementioned way as an appliance for a apparent beneath aboriginal examination. Specifically, the claims in the copy appliance charge accommodated all of the approved requirements apropos to patentability (i.e., 35 U.S.C. § 101, § 102, § 103, and § 112). A accident associated with the filing of a copy appliance is that, per 37 CFR 1.178(a), an “application for copy of a apparent shall aggregate an action to abandonment that patent, and the abandonment shall booty aftereffect aloft copy of the patent.” Therefore, the aboriginal apparent claims will be replaced by those auspiciously prosecuted during the copy proceeding.
Notwithstanding the affirmation to abandonment the aboriginal patent, the Office allows a apparent buyer to “hedge” because the copy appliance may be alone at any time afore the copy occurs, including, for example, afterwards accepting a favorable aftereffect in a final accounting accommodation (FWD) in an IPR proceeding. Moreover, a copy appliance has the advantage of expedited case and will be taken up for assay alike added bound than applications accepting appropriate status. A admonition however, is that while a copy proceeding would not be precluded during the pendency of an IPR proceeding, the Office does accept the acumen to break the assay of a copy appliance beneath those circumstances, as able-bodied as whether and back to lift such a stay. In accomplishing so, the Office may accede a cardinal of factors including the cachet of any motions, the backbone of any anew presented questions, and whether appropriation the break would be in the interests of the able administering of the Office. Nevertheless, depending on the affairs of the proceeding, filing a copy appliance during an IPR may be a acceptable way to deliver claims to an invention.
Ex Parte reexamination affords apparent owners addition way to alter claims alfresco of an IPR proceeding. Filing a appeal for reexamination requires the Director to actuate whether a “substantial new catechism [SNQ]” of patentability affecting any affirmation of the apparent anxious has been presented. The Director will not acquisition a SNQ if the “question of patentability has already been . . . absitively in an beforehand assured assay or analysis of the apparent by the Office.” As such, the appeal charge acquaint a new and altered patentability issue.
Once instituted, ex parte reexaminations about abode alone issues apropos to 35 U.S.C. § 102 and § 103, although the Office may also sua sponte invoke 35 U.S.C. § 112 beneath bound affairs (i.e., in acknowledgment to anew added accountable amount in an amendment). Moreover, the asserted above-mentioned art is bound to patents and added printed publications. And agnate to a copy proceeding, the Office may break the ex parte reexamination awaiting a FWD in an IPR proceeding acclamation the aforementioned apparent with the aforementioned factors dictating whether and back the break is lifted.
Any claims that survive reexamination will aftereffect in the arising of a affidavit in the aboriginal patent, rather than the arising of a new patent. This is a cogent aberration from copy patents because a 35 U.S.C. § 315(b) bar triggered by account of a complaint alleging contravention of the aboriginal apparent will additionally administer to the reexamined patent. By contrast, copy applications aftereffect in a new apparent that is not accountable to the bar. Thus, both reexaminations and copy affairs present their own advantages and disadvantages
In sum, apparent owners complex in IPRs should accede whether accepting adapted claims via copy or reexamination would accommodated or beat the outcomes accepted afterwards affective the Board to acquiesce affirmation amendments during the IPR itself.
©1994-2021 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume XI, Cardinal 245
How To Write An Ex Parte Motion – How To Write An Ex Parte Motion
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