[authors: Michael Murphy and Martin Bader]
On Tuesday of last week, the Federal Circuit held that a party bringing a request for inter-partes reexamination may not appeal a decision by the Director of the U.S. Patent and Trademark Office that certain prior art does not raise a substantial new question of patentability. See Belkin International, Inc. v. Kappos, Federal Circuit Case No. 2012-1090. Instead the requestor must petition the Director to review such a decision. See id.
In Belkin International, Inc. v. Kappos, Belkin requested inter partes reexamination of U.S. Patent 7,035,281 based upon four (4) prior art references. The Director found that three (3) of these references did not raise a substantial new question of patentability. The Director also found that the fourth reference raised a substantial new question of patentability and ordered reexamination based upon that single reference. Reexamination addressed only the issue of anticipation by the fourth reference. After reexamination closed, the examiner issued a Right of Appeal Notice, again addressing only anticipation by the fourth reference.
Belkin then appealed to the Board of Patent Appeals and Interferences, challenging the examiner’s failure to reject the ‘281 patent based on the three prior art references that the Director previously determined did not raise a substantial new question of patentability. However, the Board determined that it did not have jurisdiction to review the Director’s prior decision. The Board also noted that Belkin had failed to petition the Director to review this decision. The Federal Circuit affirmed the Board’s ruling.
When a request for reexamination is made, the Director must first determine “whether a substantial new question of patentability affecting any claim of the patent is raised by the request [for reexamination.]” 35 U.S.C. §312(a) This determination is “final and nonappealable.” 35 U.S.C. §313. Next, inter partes reexamination is ordered for resolution of “the substantial new question of patentability determined by the Director.” See 35 U.S.C. §313. Based upon this statutory structure, the Federal Circuit therefore held that “an issue that has been determined by the Director not to raise a substantial new question of patentability with respect to certain prior art cannot later be considered by the examiner and ultimately the Board.”
The Federal Circuit further noted that if a requestor wishes to dispute a determination by the Director that certain prior art does not raise a substantial new question of patentability, then the requestor must file a petition for review to the Director under 37 C.F.R. §1.927. Section 1.927 states that “[t]he third party requester may seek review by a petition to the Director under §1.181 within one month of the mailing date of the examiner's determination refusing to order inter partes reexamination. ... If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable. However, Belkin failed to file such a petition with regards to the three prior art references it raised on appeal.
Given this statutory scheme, it is important for parties seeking reexamination to carefully note what decisions must be timely raised in a petition to the Director, and what decisions are preserved for appeal. An error can easily result in the inability to promote or preserve arguments.