USPTO Issues Guidance on Options to Amend through Reissue and Reexamination during AIA Trials
On October 29, 2018, the US Patent & Trademark Office (USPTO or Office) issued a Notice requesting comments on proposed modifications to motion to amend (MTA) practice. The Office received a number of comments and questions concerning the interplay between reexamination and reissue proceedings during a co-pending AIA trial (inter partes review (IPR), post grant review (PGR) or covered business method (CBM) review). Today, the USPTO responded to those comments by publishing a Notice discussing the handling of requests to amend claims through reexamination and reissue proceedings during co-pending AIA trials. Notably, the Notice was intended to summarize rather than amend or alter existing practice.
-On motion or on its own, the Office will likely stay examination of a reissue application or reexamination pending a FWD in an AIA trial addressing the same patent. A showing of good cause is required. The Notice provides several factors that may be considered in deciding whether to stay or lift a stay of a co-pending reissue or reexamination proceeding. A motion to lift a stay after FWD will likely be granted if the PO has proposed amendments in that proceeding in a meaningful way not previously considered by Office, e.g., narrower claims than those previously considered in a related AIA trial.
-The one-year bar to filing an IPR/PGR under 35 USC 315(b) after service of a complaint does not apply to a reissued patent, which is considered a new patent. In contrast, the one-year bar does apply to reexamined patents, which are not considered new patents, even if the reexamination certificate results in amended claims.
-Since reexamination requires raising a substantial new question of patentability (SNQ), a PO cannot raise a question in a ground already decided in a FWD. A SNQ may be based on such grounds, however, during an AIA trial. A SNQ cannot be based on denied amended claims in an AIA trial.
-The Office may deny institution of an AIA trial if a parallel Office proceeding is more advanced and involves overlapping issues.
-If a stay of a reissue application is lifted on PO’s motion pending Federal Circuit appeal of a FWD, the USPTO will delay issuing any notice of allowance pending resolution of the appeal. But reexamination typically will continue to completion, notwithstanding a Federal Circuit appeal.
Today’s USPTO Notice continues Director Iancu’s push to provide meaningful mechanisms for permitting PO’s to amend claims during AIA trials. Now, in addition to the recently-launched MTA pilot program, which provides PO’s up to two opportunities to present amended claims, the Office has confirmed that PO’s may file for reissue or reexamination, even after a negative FWD, effectively affording a third opportunity for PO’s to amend their claims.