Reexamination Petition Practice Is a Critical Tool for Patent Owner Success

Takeaways:

1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings.
2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or Federal Circuit review.

Because ex parte reexamination proceedings are unique, issues of first impression, fact patterns that do not quite fit within the rules or prescribed Manual of Patent Examination Procedure (MPEP) guidance, and situations that demand reconsideration often arise. Filing a petition may be the appropriate vehicle for relief from such situations. There are a variety of petition types available to a Patent Owner during reexamination. In this article, we will focus on the basic general requirements of all petitions filed in reexaminations. In upcoming articles, we will dive more deeply into specific types of petitions commonly filed during reexamination, such as the distinctions between 37 C.F.R. §§ 1.181, 1.182, and 1.183.

The question of whether to file a petition in a reexamination proceeding begins with assessing whether or not the underlying complaint involves a petitionable or appealable issue. The line of demarcation between appealable matters and petitionable matters is ordinarily clear: issues arising out of procedural issues based on rules and regulations (e.g., objections in Office actions) are generally petitionable; and issues affecting the substance of a preceding, based on statute (e.g., SNQ), rejections are appealable. In reexaminations, however, the line may be less clear. SNQs are based on statute, but issues arising from disagreement with the Examiner’s SNQ determination may be both petitionable and, ultimately, appealable, depending upon the circumstances. Similarly, an objection to an amendment for introducing new matter in a specification may be petitionable. However, if the objection is for new matter introduced into a claim coupled with a rejection of that claim (recall that reexamination amendments are subject to 35 U.S.C. § 112 rejections), both issues would be appealable as the objection is determinative of the rejection.

Regardless of the petition type, all petitions submitted to the USPTO must address five general requirements of a petition.

1. The petition must be in writing, per 37 C.F.R. § 1.2. The petition should be clear on its face the precise issue being petitioned. Because different areas of the Office have been delegated authority to decide different types of petitions, the petitioner should focus the petition’s subject into a single request or issue to ensure the petition’s timely consideration by the appropriate deciding official. Do not offer alternative bases for construing the petition.
2. The petition must contain a complete statement of facts involved, the points or issues to be reviewed, and the specific relief or action requested. Using headings helps ensure each of these requirements is met. The completeness with which the petition is drafted influences the decision rendered. When the petition fails to fully address each requirement, the Office must dismiss the petition, leading to delays and piecemeal petitioning via requests for reconsideration.
3. The petition must be accompanied by a proper fee, if required, to avoid being summarily dismissed.
4. The petition must be timely filed as required in 37 C.F.R. § 1.181(f) or other specific statute or regulation. The PTO relies upon § 1.181(f) as granting the PTO broad discretion to dismiss any petition not filed within two months of the action being complained of as “untimely.” Thus, prompt submission of petitions is encouraged.
5. The petition must comply with any specific requirements as provided by statute, regulation, or USPTO policy.

The Director delegates petition-deciding authority to a great number of designees throughout the Office. Normally, petitionable reexamination issues flow through the Central Reexamination Unity (CRU), Petitions Branch, or Office of Patent Legal Administration (OPLA) first, followed by the Commissioner, the District Court via an Administrative Procedures Act proceeding, and finally, the Federal Circuit.

One final note: Although petition decisions are available in the Commissioner’s’ FOIA reading room and via commercial search services, the PTO has made a number of prior reexamination petition decisions available here and searchable via the Google Books search prompt. After locating a prior decision on an issue of interest, one can review the patent file history on Patent Center to see the fact pattern and petition which supported the decision.