Federal Register Notice Advertises Alternative PTAB Amendment Options

Last Friday the USPTO published a notice in the Federal Register entitled: Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (here). The Notice outlines considerations for stakeholders pursuing reexam/reissue as an alternative amendment path to Patent Trial & Appeal Board (PTAB) AIA trial mechanisms. While, the Notice is careful to emphasize that each case will be considered on its own merits, and provides aspects of the record that will be considered in this regard, practically speaking, most such proceedings will be stayed pending an AIA trial.

The true point of the Notice is to advertise that there are other, ex parte options for amending patents that are separate and apart from the PTAB’s controversial amendment processes.

The Notice summarizes basic reissue and reexamination practices, and distills down the Board’s consideration in staying such proceedings as follows:

Whether the claims challenged in the AIA proceeding are the same as or depend directly or indirectly from claims at issue in the concurrent parallel Office proceeding;
Whether the same grounds of unpatentability or the same prior art are at issue in both proceedings;
Whether the concurrent parallel Office proceeding will duplicate efforts within the Office;
Whether the concurrent parallel Office proceeding could result in inconsistent results between proceedings (e.g., whether substantially similar issues are presented in the concurrent parallel Office proceeding);
Whether amending the claim scope in one proceeding would affect the claim scope in another proceeding;
The respective timeline and stage of each proceeding;
The statutory deadlines of the respective proceedings;
Whether a decision in one proceeding would likely simplify issues in the concurrent parallel Office proceeding or render it moot.

In most cases these factors will militate in favor of a stay. For example, with reexam/reissue applying BRI and the PTAB applying Phillips, inconsistent results would appear to be (theoretically anyway) built into the system at this point. Likewise, with Rule 42.73(d) estoppel impacting reexam/reissue proceedings conducted post-PTAB, the time to pursue such alternative amendment options is before an assertion, not after being pulled into the PTAB (or after a Patent Owner loss).

With both patent reissue and reexamination being conducted by the Central Reexamination Unit (CRU), rehabilitated/expanded claim sets can be secured in as fast as 6 months. While the best option is always to maintain a pending continuation application, many existing patent portfolios were completed before the PTAB threat to monetization efforts. As such Patent Owners should consider selective reissue/reexamination filings to provide further claim diversity prior to assertion.

Scott A. McKeown is an author of the Patents Post Grant