[author: Andrew S. Baluch]

Responding to public feedback, the USPTO announced that it has dropped a controversial proposal that would have required all requests for ex parte reexamination to identify the requester’s “real party in interest.” The change is one of several new provisions in a final rule, released August 6, 2012, which implements a new estoppel provision in the America Invents Act (AIA) barring ex parte reexamination of a patent following the completion of an inter partes review or post-grant review. Third-party requesters and patent owners alike will need to be familiar with the Final Rule which goes into effect on September 16, 2012.

The AIA Provisions Relating to Ex Parte Reexamination Estoppel

The AIA contains two estoppel provisions, codified at 35 U.S.C. 315(e)(1) and 325(e)(1), respectively, which preclude any “proceeding before the Office” after a final written decision is issued in an inter partes review or post-grant review:

PROCEEDINGS BEFORE THE OFFICE.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. (35 U.S.C. 315(e)(1))

PROCEEDINGS BEFORE THE OFFICE.—The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review. (35 U.S.C. 325(e)(1))

The legislative history indicates that ”a proceeding before the Office” includes an ex parte reexamination:

“Reasonably could have raised estoppel applied to subsequent administrative proceedings. A party that uses inter partes review is estopped from raising in a subsequent PTO proceeding (such as an ex parte reexam or inter partes review) any issue that it raised or reasonably could have raised in the inter partes review.” (HR Rept. No. 112-90, at 47 (June 1, 2011)).

The USPTO’s Proposed Rules (January 5, 2012)

The USPTO initially proposed to implement the AIA’s estoppel provisions by requiring all requests for ex parte reexamination to contain both:

1. a “certification that the statutory estoppel provisions of both inter partes review (35 U.S.C. 315(e)(1)) and post-grant review (35 U.S.C. 325(e)(1)) do not prohibit the ex parte reexamination,” and
2. a “statement identifying the real party(ies) in interest.”

If a requester wanted to remain anonymous under this proposal, the requester would need to file the required statement as a separate paper and ask the Office to (hopefully) keep it under seal.

Public comments were critical of this proposal. They argued that it would have a “chilling effect” on requests for ex parte reexamination. They also pointed out that the proposed rule already required the requester to certify that the estoppel provisions do not prohibit the reexam, and thus a separate statement identifying the real party in interest is unnecessary.

The USPTO’s Final Rule (August 6, 2012)

The USPTO responded favorably to the public comments, stating:

The Office’s proposal … to require an ex parte reexamination reqester to identify themselves upon the filing of the request has not been implemented. The certification requirement of § 1.510(b)(6), coupled with a party’s obligations under § 11.18 when transacting business before the Office, are considered sufficient to ensure compliance with the new statutory estoppel requirements.”

The Final Rule, codified at 37 C.F.R. 1.510, reads as follows:

§ 1.510 Request for ex parte reexamination.
(a) Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).
* * *
(6) A certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.

The USPTO explained that when requesters make the required certification under § 1.510(b)(6), they can look to the common law “control” test discussed in the Practice Guide for Proposed Trial Rules (February 9, 2012) (“While many factors can lead to a determination that a petitioner was a real party-in-interest or privy in a previous proceeding, actual control or the opportunity to control the previous proceeding is an important clue that such a relationship existed.”).

Patent Owner Challenges to Requester Certifications

In eliminating the requirement to identify the real party in interest, the USPTO has left open the possibility that a requester’s estoppel certification might be called into question during the ex parte reexamination proceeding:

If the Office becomes aware of facts that call the certification into question, the Office will determine, on a case-by-case basis, whether the request for ex parte reexamination is prohibited by statute.

Thus, patent owners may have a new way to terminate an ex parte reexamination against their patents if they learn the identity of the real party in interest — or of its privies — and are able to bring that information to the USPTO’s attention.