PTO Explains that Old School Proceedings (Reissue/Reexam) Must Generally Yield to New School Proceedings (AIA Trials) for Claim Amendments

| Benjamin Anger

Recently, the PTO issued a Notice providing guidance on how the Board treats reissue and reexamination proceedings while an AIA trial on the same patent is co-pending. The guidance comes in response to public comments and questions seeking to understand the interplay, particularly with respect to claim amendments, between the PTO’s long-established reissue and reexamination proceedings, and the PTO’s relatively new AIA trials (inter partes review, post-grant review, and cover business methods). Questions concerning a patent owner’s potential use of reissue or reexamination as an alternative route to amending claims in an AIA trial are not surprising given the PTO’s low rate of granting Motions to Amend in AIA trials, on the order of just10% through the end of fiscal year 2018. Even though the Notice is “only meant to summarize existing practice,” several important lessons can be drawn from it.

First, the Notice is not so explicit, but the message is that reissue and reexamination proceedings are not available as alternative paths for a patent owner to divert a patent from an on-going AIA trial in order to amend the challenged claims in a parallel proceeding (i.e., via reissue or reexamination). By statute, a patent owner may file a reissue application or reexamination request at any time before the PTO or Federal Circuit have cancelled the patent claims and no appeal right remains. But once an AIA trial is underway, any subsequent reissue or reexamination proceeding will ordinarily be stayed, where good cause exists, until the AIA trial has been resolved. The Notice lays out several factors for determining good cause, including whether the parallel proceedings would address the same or overlapping claims, whether amending claim scope in one proceeding would affect the claim scope in another proceeding, and whether the concurrent parallel proceedings could result in inconsistent results between proceedings. The Notice also emphasizes that an AIA trial is subject to statutory deadlines for completion, whereas reissue and reexamination proceedings are not, thus giving the AIA trials priority over these alternative proceedings.

Second, the Notice recognizes the scenario where a patentee-initiated reissue or reexamination proceeding is already in progress at the time a challenger files a petition in an AIA trial. Here, the Notice indicates that the Board has discretion to deny institution of the petition under 35 U.S.C. § 325(d). In denying the challenge, the Board would consider if the petition involves overlapping issues with the parallel proceeding and how far long the parallel proceeding has advanced.

Third, the Notice provides an indication of how a stayed parallel proceeding might be used by a patent owner to address issues in an adverse final written decision. In explaining factors the PTO considers when lifting a stay on a parallel proceeding, the Notice helpfully explains that a patent owner might be successful in lifting the stay when proposing “amendments in that proceeding in a meaningful way not previously considered by the Office.” The Notice continues, “[m]eaningful amendments may include those that narrow the scope of claims considered in an AIA proceeding or otherwise attempt to resolve issues identified in the final written decision.” Thus, a patent owner could pursue the amended claims in the parallel reissue or reexamination, while also appealing the adverse ruling on the original claims to the Federal Circuit. If allowable subject matter is found in a reissue application, the PTO will hold the allowance until the appeal concludes and then decide how to proceed once the Federal Circuit issues a decision. If allowable subject matter is found in a reexamination proceeding, the PTO will issue the notice of intent to issue a reexamination certificate (“NIRC”) even if the Federal Circuit appeal remains ongoing.

Editor: Kerry S. Taylor, Ph.D.