1. 1 1 AIPLA 1 1 American Intellectual Property Law Association USPTO Post-Grant Procedures and Effective Use of Reissue AIPLA IP Practice in Japan Committee Mid-Winter Institute Pre-Meeting Seminar January 28, 2015 Raymond E. Farrell Carter, DeLuca, Farrell & Schmidt, LLP

2. 2 2 AIPLA 2 Overview Third Party Initiated Post-Grant Options Reissue Reissue vs. Post-Grant Procedures (PGPs) Strategies –Patent Owner –Third Party Challenger

3. 3 3 AIPLA 3 Third Party Initiated Post-Grant Options Ex-Parte Reexamination (ExPR) Post-Grant Review (PGR) Inter-Partes Review (IPR) Covered Business Methods (CBM)

4. 4 4 AIPLA 4 Third Party Initiated Post-Grant Options

5. 5 5 AIPLA 5 Third Party Initiated Post-Grant Options

6. 6 6 AIPLA 6 Third Party Initiated Post-Grant Options When Threshold Showing Purview Pendency Estoppel ExPR After grant Substantial new question Patents, Pubs., 102, 103 Years None PGR Within 9 mos. of grant (AIA only) More likely than not claim is unpatentable or novel legal question 101, 102, 103, 112 12-18 mos. Issues raised or could have raised IPR After 9 mos. of grant or reissue; or after terminated PGR Reasonable likelihood of success Patents, Pubs., 102, 103 12-18 mos. PTO: raised or could have raised USDC: raised CBM After grant (pre-AIA); 9 mos. after grant (AIA) More likely than not AND sued or charged with infringement 101, 102, 103, 112 12-18 mos. Issues raised or could have raised

7. 7 7 AIPLA 7 Reissue What’s a patent owner to do?

8. 8 8 AIPLA 8 Reissue to the rescue!! Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent.... 35 U.S.C. § 251 (strikeout text = post AIA statute) Reissue

9. 9 9 AIPLA 9 Reissue Examined in Central Reexamination Unit Absolute right to amend prior to receiving a Final Office Action Permits correction of errors which render a patent wholly or partly inoperative or invalid Possible “errors” include: defects in the specification or drawings claiming more or less than right to claim failure to perfect priority claims inventorship

10. 10 AIPLA 10 Reissue Possible strategies/goals: –Revive application/family –Don’t Amend Claims Cite to “error” in specification or drawings, e.g., to submit prior art not previously considered –Amend Claims Narrowing amendments/new dependent claims Broadening amendments/new claims Cover –new products (patent owner or third-party) –unclaimed embodiments, concepts or species

11. 11 AIPLA 11 Reissue Bonus: Not limited to correction of the identified error But …. Re-opens prosecution entirely, i.e., subject to –§§101, 102, 103, 112 for all claims!

12. 12 AIPLA 12 Reissue Broadening Reissue File ≤ 2 years from patent grant Can file Continuing Reissue(s) > 2 years and still broaden Intent to broaden must be established ≤ 2 years (In re Graff) Broadening not likely as much of an issue in use as strategy for concurrent PGPs or litigation

13. 13 AIPLA 13 Reissue Limitations –Cannot recapture surrendered subject matter prosecute non-elected claims overcome terminal disclaimer remove priority claim

14. 14 AIPLA 14 Reissue Possible Intervening Rights –Otherwise past infringement activities occurring between original patent issuance and Reissue patent grant –Consider change in claim scope of likely amendment greater change in scope = more likelihood of intervening rights

15. 15 AIPLA 15 Strategies

16. 16 AIPLA 16 Strategies Common scenarios - 3 rd Party Challenger Files: –PGR or IPR as a pre-emptive measure, but cannot file –PGR/IPR if already filed civil action challenging validity (does not include validity defense in civil action) –CBM because must have been sued or charged with infringement first –PGR, IPR or CBM in response to adversarial engagement by Patent Owner, e.g., cease & desist, or infringement litigation

17. 17 AIPLA 17 Strategies – Patent Owner Possible Reissue Strategies for Patent Owner –As a pre-emptive measure to get patent in better condition for assertion and validity challenges –As a countermeasure to PGPs or invalidity defense

18. 18 AIPLA 18 Strategies – Patent Owner Consider Reissue as a pre-emptive tactic before engaging adversary to: –Revive prosecution of patent family = more options for pre-litigation posturing/settlement, litigation, preservation of validity, e.g. seek better or layered coverage on infringing activity with different claim scope from patent’s original claims address prior art not previously considered during prosecution

19. 19 AIPLA 19 Strategies – Patent Owner Consider Reissue as countermeasure to PGPs or invalidity defense –Flexibility of amending vs. IPR where: “challenged claim can be replaced by only one claim, and a motion to amend should, for each proposed substitute claim, specifically identify the challenged claim which it is intended to replace” (Idle Free Systems, Inc. v. Bergstrom, Inc.) –File Reissue application before decision rendered by PTAB –Likely to be stayed but will avoid possibility of uncertainty if all claims are declared invalid

20. 20 AIPLA 20 Strategies – Third Party Challenger File Protest in the Reissue –Unlike IPR can submit any information, not just patents and printed publications –May be filed before Notice of Allowance mailing date

21. 21 AIPLA 21 Strategies – Third Party Challenger Protest must include: –List of documents/document portions/other information being submitted (with identifying information required in 37 CFR §1.291): U.S. patent/published application Foreign patent/published application Non-patent publication; and Item of other information - identified by date, if known –Concise explanation of the relevance of each item

22. 22 AIPLA 22 Strategies – Third Party Challenger Protest must include (cont.): –Copy of each non U.S. patent/published application item; –English translation of any non-English item; Subsequent protest(s) by same party in interest, must explain why: –the issue(s) are significantly different than those raised earlier; –it was not presented earlier

23. 23 AIPLA 23 Questions? Raymond E. Farrell www.cdfslaw.com +1 (631) 501-5700 rfarrell@cdfslaw.com

24. 24 AIPLA 24 References Reissue Application Filing Guide http://www.uspto.gov/forms/uspto_reissue_ads_guide_Sept2014.pdf Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 3-10. In re Graff, 111 F.3d 874, 877 (Fed. Cir. 1997))

25. 25 AIPLA 25 Appendix Ex Parte Reexamination (ExPR) –An ExPR is initiated by a third party, but once the proceeding is instituted the third party no longer actively participates in the proceeding. ExPR became available on July 1, 1981, and is available for all patents regardless of filing date. A patent is eligible for ExPR from the date it is granted or reissued through the end of its period of enforceability. The Director of the USPTO can institute an ExPR sua sponte, but only upon a finding that a patent brings disrepute on the PTO or that a significant procedural error occurred during examination.

26. 26 AIPLA 26 Appendix Post-Grant Review (PGR) –A PGR is initiated by a third party who has not previously filed a civil action challenging the validity of a claim of the patent, the review is heard by the PTAB, and both the patent owner and the third party participates in the PTAB trial. PGR is available only for patents with an EFD on or after March 16, 2013. A patent is eligible for PGR within 9 months after the date it is granted or reissued.

27. 27 AIPLA 27 Appendix Inter Partes Review (IPR) –An IPR is initiated by a third party who has not previously filed a civil action challenging the validity of a claim of the patent, and the third party actively participates in the proceeding. IPR became available on September 16, 2012, and is available for all patents regardless of filing date. A patent is eligible for IPR 9 months after the date it is granted or reissued, or, if there is a PGR in process (only applies to patents with an EFD on or after March 16, 2013), after the PGR proceeding is terminated.

28. 28 AIPLA 28 Appendix Covered Business Method Review (CBM) –A CBM may be initiated by a third party who has been sued or charged with infringement of a covered business method patent. CBM became available on September 16, 2012, and is available for all patents regardless of filing date. For patents with an EFD before March 16, 2013, CBM is available from the date the patent is granted or reissued. For patents with an EFD on or after March 16, 2013, CBM is only available 9 months after the date the patent is granted or reissued, or, if there is a PGR in process, after the PGR proceeding is terminated.

29. 29 AIPLA 29 Appendix CBM definitions: –A covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions. –A patent for a technological invention is defined as a patent wherein the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution.