Last week, a proposal was made in the United States Senate to utilize the United States Patent and Trademark Office (“USPTO”) reexamination process to examine amended claims proposed during an Inter Partes Review (“IPR”) procedure or Post Grant Review (“PGR”) procedure. This procedure would provide an alternative to the existing, but uncertain, amendment-by-motion process at the Patent Trial and Appeal Board (“PTAB”).
Although the America Invents Act (“AIA”) specifically provides that Patent Owners may file one motion to amend their claims, PTAB grants of such motions are exceedingly rare. The source of this paradox lies in the PTAB’s composition: they are judges, not patent examiners. PTAB judges weigh the evidence developed during the proceeding, and they institute a Final Decision after the hearing. Their role is to determine whether the petitioner has met the requisite standard to prove unpatentability, but they are not themselves patent examiners. In denying motions to amend, the PTAB generally argues that if the motion was granted the amended claims would be added to an issued patent without examination. Consequently, PTAB motions practice has proven to be unhelpful for Patent Owners.
Under the new proposal, a patentee may request that the USPTO examine proposed amendments to one or more claims on which the PTAB has instituted review. The case will then be submitted to the USPTO’s Central Reexamination Unit (“CRU”) to examine any such proposed amendments for patentability, using the existing model for reexamination of issued patents. The original claim on which the IPR/PGR was instituted will remain within the purview of the PTAB, and a request for amendment will not be deemed an admission of unpatentability.
Examination of proposed amendment(s) will not be permitted to be stayed without the patentee’s consent, and the examination of the amended claims and the instituted IPR/PGR will proceed separately but concurrently. When examining a proposed amendment, however, the USPTO will consider documents from the relevant IPR/PGR, including the petition, the evidence, prior art and arguments submitted by the parties, the institution decision of the PTAB, and any final written opinion if one is issued during examination of the request. This will allow the USPTO to ensure that different outcomes do not occur for substantially similar claims.
Interestingly, there does not appear to be an avenue for petitioner participation in the examination process. Instead, subsequent IPRs can be lodged. In addition, the problematic estoppel provision of 37 C.F.R. 42.73(d)(3) will be changed to no longer require that the amended claims be patentably distinct over the claim that is canceled or declared unpatentable.
If adopted, it appears that the IPR/PGR claim amendment process will become similar to a reexamination proceeding instituted by the Patent Owner, but with additional sources of material available to the CRU.
