United States: Thwart PTAB Attacks With These USPTO Post-Grant Options

CRU Faster Than Before AIA, Provides Options for Patent Owners

Patent reexamination filings have fallen 86% since 2012. With the elimination of the popular inter partes patent reexamination option in 2012, an overall decrease was certainly expected. However, ex parte reexamination filings continue to drop every year. Only 191 ex parte reexamination requests were filed in 2017. This was the lowest number of ex parte reexamination filings since the mid-1990s. While an ex parte patent challenge is far less appealing to a patent challenger than a contested proceeding (AIA trial proceeding), and this factor has undoubtedly contributed to the decreasing numbers, patent reexamination and other post-grant proceedings of the Central Reexamination Unit (CRU) still provide unique rehabilitation opportunities for patent owners.

In 2008, the time from filing of a request for ex parte patent reexamination until receiving a First Action on the Merits (FAOM) was 12 months. Now, the time from filing of a reexamination request to a FAOM is just over 4 months. That is, within 4-5 months of filing a request for ex parte patent reexamination, the USPTO will issue both a determination, and an office action rejecting/confirming the claims. Similar advances in speed are reported across all aspects of ex parte reexamination processing. The increased speed is a natural consequence of the reduced workload of the Central Reexamination Unit (CRU). This new found speed, which shaves about a year off of reexamination processing, brings further value to a patent reexamination initiated by a patent owner.

For patent owners, addressing claim overbreadth prior to patent monetization is now of heightened importance. This is because almost every patent litigation is now accompanied by an AIA Trial Proceeding. The Patent Trial & Appeal Board (PTAB) is not the ideal place for amendment given the ability of challengers to oppose such filings, and the limit on the number of claims that can be added. Patent Owners looking to adjust their claim scope, or diversify claim coverage prior to monetization — a prudent step given the current assertion climate— would be wise to consider a patent owner initiated patent reexamination. Given the enhanced speed, if amending, patentees can usually conclude the reexamination proceeding in a few months' time. This allows the patentee to exit the proceeding quickly, with (theoretically speaking) a stronger/larger claim set for assertion. Additionally, the strongest prior art (if known) is better handled in an ex parte proceeding as opposed to an AIA Trial.

Another rarely used patent owner option is on a modest upswing, Supplemental Examination.

Supplemental Examination (SE) is also processed by the CRU on a similar schedule to ex parte patent reexaminations (although a bit more complex due to rules for accompanying information submissions). In operation, SE allows a Patentee to submit very detailed explanations of potential issues that may render the patent invalid under an inequitable conduct theory. Upon submission of Substantial New Questions of Patentability (SNQs) detailing such potential defects, the Office will reconsider the information; that is to say the Office will perform a "supplemental examination." Once such issues are considered and dispatched by an SE certificate, the subject patent would be free of inequitable conduct charges. On the other hand, should the materials presented raise an SNQ, a form of patent reexamination is conducted (differing from typical practices in that it is not be limited to patents and printed publications). After Therasense, much of the original SE appeal faded. Still, it offers the ability to have the office consider issues outside of the "patents and printed publications" of reexamination, and conveys an added inequitable conduct inoculation.

A further option for patent owners is patent reissue, also now assigned to the CRU. While public data on patent reissue is not available, I have also seen marked improvement to the speed at which patent reissue filings are processed. There are distinct advantages to patent reissue as compared to patent reexamination and SE, not the least of which is the ability to broaden patent claims, and the ability to restart continuation practice.

Many patent portfolios were drafted prior to the existence of the PTAB. As the PTAB is now the first major hurdle to patent monetization, review and reinforcement of those claims sets via one of the above proceedings may be worthwhile, While not a complete guarantee of later PTAB success, such portfolio rehabilitation will put Patent Owners in a better position to thwart such challenges.

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