After 24 years of reexamination practice, the U.S. Patent and Trademark Office (USPTO) has made a major policy shift. The USPTO revised its policy by stating that it will only examine claims in which the requester requests examination and a substantial new question (SNQ) of patentability was raised. (NOTICE OF CLARIFICATION OF OFFICE POLICY TO EXERCISE DISCRETION IN REEXAMINING FEWER THAN ALL OF THE PATENT CLAIMS, October 5, 2006.) This policy is being implemented to facilitate the USPTO’s compliance with its statutory mandate for "special dispatch" of 35 U.S.C. §§ 305 and 314(c) in handling ex parte and inter partes reexaminations. According to the USPTO, "the non-requested claims may be claims that are currently being litigated, thus introducing complexities delaying the proceeding as to the requested claims." The USPTO noted that the Manual of Patent Examining Procedure (MPEP) states that each claim of a patent will be examined, citing MPEP § 2258 for ex parte reexaminations and MPEP § 2658(IV)(B) for inter partes reexaminations.
The USPTO limited the scope of claims reexamined in inter partes reexamination by relying on the logic of reasoning set forth in Sony Computer Entertainment America Inc., et al. v. Jon W. Dudas, Civil Action No. 1:05CV1447 (E.D.Va., May 22, 2006) holding that the scope of inter partes reexamination is claim-specific where the USPTO finds a SNQ of patentability affecting a claim of patent is raised. The USPTO analogously applied the logic of Sony to ex parte reexamination. Where reexamination is requested for fewer than all of the patent claims, the agency’s policy will be that the order granting or denying reexamination will be generally limited to a review on the merits of only the claims for which reexamination was requested. Additionally, when a final decision of the Federal court, after appeals, holds one or more of the claims invalid or unenforceable, then such claims will not be reviewed on the merits in a reexamination proceeding.
Practice Note: This clarification is a change from the MPEP policy and will likely be subject to case-by-case review as to related reexamination claims and/or amended claims presented by the patent owner. It is clear, however, that unless the requester requests reexamination of all patent claims, the USPTO will generally reexamine only the requested claims.
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