Ex Parte Reexamination

Patent Ex Parte Reexamination

Having problems with a patent that you believe is invalid? Know about uncited prior art? Consider filing a Patent Ex Parte Reexamination request.

In the US, there are various legal methods to challenge the validity of issued patents. These legal methods vary greatly in expense and relative risk.

  • You can try to challenge a patent by a full Federal Court trial. Such trials are very expensive.  Indeed, patent litigation is frequently referred to as the “sport of kings”. Another problem is that you (the challenger) can’t be anonymous. So the possibility of “return fire” is high.
  • Alternatively, you can try to challenge a patent by an inter partes review (IPR) at the USPTO Patent Trial and Appeal Board (PTAB). The IPR process is essentially a streamlined mini-trial. IPR are relatively new (since 2013) and were established in an attempt to reduce the high costs of litigation. Indeed, IPR are about an order of magnitude cheaper than Federal Court litigation. This is still quite pricy for small firms, however, and again the challenger can not be anonymous.
  • You can also challenge a patent by filing a USPTO Ex Parte Reexamination request. This is the lowest budget approach. Reexaminations can cost an order of magnitude less than an IPR (and two orders of magnitude less than Federal Court litigation!) Ex Parte Reexaminations are thus in the price range for individual inventors and small startup companies. An additional advantage of this method is that you (the challenger) can be anonymous.  That is, if you file through an attorney, you need not give your identity, thus avoiding return fire.

At present, only about 200 Ex Parte Reexamination requests are filed each year. Given the low costs, and minimal risks, why isn’t this method used more often?  Probably because fewer arguments are allowed, and the challenger has less control over the process.

To file an Ex Parte Reexamination request, you (the challenger) need to identify some new and convincing printed prior art. Usually, this is one or more patents or other publications that were not previously cited. These new prior art references should be convincing enough to raise a Substantial New Question of Patentability (SNQ). Here, only two issues can be raised. These are anticipation (35 USC 102 – one new reference is enough); or obviousness (35 USC 103 – usually based on two or more new references).

To initiate the challenge, you need to fill out a USPTO form (PTO/SB/57) with the relevant information, and further include a detailed request providing further explanation. The explanation shows how the various limitations in the challenged claims correspond to the various prior art references. Claim charts can be used, but are not required. This explanation is a bit like a USPTO office action.

The challenger submits the form and detailed request to the USPTO along with other required papers, and the required reexamination fee (presently $3,000 for a small entity). The challenger (or the attorney) must also serve a copy of this request to the owner of the challenged patent, and provide proof of service to the USPTO as well.

The USPTO will review the request. If it complies with the USPTO standards, they will inform the patent owner that their patent is now being reexamined.

The main drawback/feature of the Ex Parte Reexamination process is that after the request is submitted, you (as challenger) have no further input. This is good in that it reduces costs, but bad in that it also limits your control.

Once reexamination is initiated, the USPTO patent examiner reopens examination by issuing new rejections, which the patent owner is expected to rebut.  Sometimes this works, sometimes it does not. If your new citations are not convincing enough, the reexamined patent may issue again, either with the same claims or more limited claims.

Still, if you want to try to knock out a troublesome issued patent, know about some juicy but uncited prior art, and are on a budget, consider the Ex Parte Reexamination option.

Sovereign Immunity, Tribes, & IPR

tribal lands
Tribal lands in the US

A strange way to help immunize US patents from IPR attack has recently emerged – the “sovereign immunity defense”.

IPR attacks: Since the America Invents Act (ACA) went into effect in 2013, a popular way to invalidate patents has been to challenge them in Inter Partes Review (IPR) proceedings. IPR proceedings are a USPTO (Federal) Patent Trial and Appeal Board (PTAB) proceeding where challengers can argue that a given patent is not novel, or is obvious, in view of various published prior art.

Sovereign Immunity: The Eleventh Amendment to the US Constitution reads: “The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.”

Background: The University of Maryland (UMD) owned patent 7,635,386, covering a method of repairing cardiac valves. In May 2017, UMD successfully overcame an IPR challenge by arguing that UMD, as part of the State of Maryland, was therefore immune from the PTAB and IPR under the Eleventh Amendment (Sovereign Immunity).

OK… maybe so. Certainly UMD was able to cite various cases supporting their view. PTAB agreed and dismissed the challenge.

They did what? Allergan PLC, a multinational pharmaceutical company with its own patents to protect, decided to push this concept to the limit.  Allergan sold some of their patents to the St. Regis Mohawk Tribe (located in New York) and then immediately licensed the patents back again. In September 2017 Allergan then argued that since this tribe is also a sovereign government, “the tribe’s” patents also had sovereign immunity to IPR challenges!

Well, points for creativity! I don’t think anyone has ever thought of this angle before. Certainly the tribe was very happy to supplement its Casino business.

We will have to see how this plays out.  In terms of sovereignty, the tribes’ legal status, “domestic dependent nations”, is best described as “it’s complicated”. Has Allergan invented a new form of “patent laundering“? Patent law just took a bizarre turn.

While the courts sort this one out, enjoy the enclosed map of the continental US, showing the larger tribal lands in color. Are these the new frontier in creative patent law strategies?

Impressions on the new (post AIA) Patent Trial and Appeal Board (PTAB) patent trial format

Gavel
Gavel

PTAB:  The 2011 America Invents Act (AIA) significantly changed many aspects of patent law. One change was to try to improve patent quality by allowing potentially invalid patents to be challenged in new types of post-grant opposition procedures.

The Europeans have had a patent opposition process for years, and having observed it in operation at first hand, I am unimpressed.  The European system lacks legal protections that Americans take for granted (e.g. rules of evidence, protections against unfair surprise).  It is also possible to game the European system by requesting that the opposition be done in a language that (conveniently) the original European examiner or other parties may not speak.   Another problem is that the European opposition review panels operate by making instant verbal “shoot from the hip” decisions, and only “justify” the decisions in writing months later.

The USPTO Patent Trial and Appeal Board (PTAB) has been working to implement an American version of the opposition process.  They have been hosting roundtables to show their progress to date and solicit feedback.  I attended their April 29, 2014 roundtable at Santa Clara University, and came away favorably impressed.

http://www.uspto.gov/ip/boards/bpai/ptab_aia_trial_roundtables_2014.jsp

In my opinion, the real challenge in doing decent post-grant opposition procedures is the delicate balance between trying to bring in more of the legal protections of common law/Federal law rules of evidence and civil procedure (thus improving on the European system), while minimizing the burdens of a conventional trial process.  Here, in addition to the obvious high costs and long times associated with conventional trials; there is also an issue of legal expertise.

Conventional patent trials are so complex that typically they are handled by expert litigation attorneys.  These litigation attorneys have a detailed knowledge of the trial process, but sometimes less knowledge of patent law and the underlying technology.  By contrast, patents are usually prosecuted by patent attorneys who may have very detailed knowledge of patent law and the underlying technology at issue, but often less trial process expertise.

PTAB appears to be attempting to devise a streamlined review system that retains a number of common law/Federal trial conventions and legal protections, without being overly burdensome.  In my opinion, their approach does improve on the due process of law deficiencies I noticed in European oppositions.  Relative to standard trials, the PTAB approach appears to be relatively simple, and you don’t need to be a litigation expert.

I am hopeful that with some review of the rules of evidence, civil procedure, and of course PTAB procedures, patent attorneys (often most knowledgeable about the patent and related technology) should be able to come up to speed with the new PTAB reviews fairly quickly.