PTAB Guidance on Using Reissue and Reexamination to Amend Claims in AIA Trial Proceedings
April 29, 2019
What Do We know?
1. The Patent Trial and Appeal Board (“PTAB”) has clarified that a reissue application or ex parte reexamination request may be filed at any time before issuance of a USPTO certificate cancelling all patent claims or a Federal Circuit mandate finding all claims invalid. https://www.govinfo.gov/content/pkg/FR-2019-04-22/pdf/2019-08022.pdf
2. The reissue “error” requirement (35 U.S.C. § 251) may be satisfied by a patent owner’s previous failure to present narrower claims (citing In re Tanaka, 640 F.3d 1246, 1251 (Fed. Cir. 2011)).
3. The § 315(b) one-year statutory bar triggered by service of an infringement complaint may not apply to newly reissued claims (citing IPR2014-00358, Paper 21, 7-8 (PTAB July 14, 2015); Click-To-Call Techs. v. Ingenio, Inc., 899 F.3d 1321, 1336-37 (Fed. Cir. 2018)).
4. Reissue applications may address all statutory patentability requirements (§§ 101, 102, 103, 112).
5. A patent owner may abandon a reissue application after a favorable FWD but before reissue.
6. Reissue applications are published in the Official Gazette and provide an opportunity for a third party to file a protest (citing MPEP 1441.01).
Observations and Practice Tips:
1. Patent owners should consider the value of filing a reissue application or reexamination request after the PTAB issues a FWD that explains PTAB’s rationale for cancelling originally issued claims based on a full evidentiary record.
2. Patent owners might consider hedging their bets by filing a contingent motion to amend, knowing that if the motion is denied they can still file a post-FWD narrowing reissue application or reexamination request (subject to the Substantial New Question of patentability limits referenced above).
3. Another option for reexamination is to consider filing the request after a PTAB oral hearing but before a FWD, if the Substantial New Question of patentability is based on an instituted ground and patent owner wants the § 315(b) statutory bar to apply to petitioner.
4. According to MPEP 1449.01, if the USPTO issues a certificate cancelling all patent claims, a pending reissue application or reexamination request that contains narrower claims than the cancelled original claims may proceed under certain conditions.