United States Patent and Trademark Office OG Notices: 31 October 2006
Notice of Clarification of Office Policy
To Exercise Discretion in Reexamining
Fewer Than All the Patent Claims
A. Summary: The United States Patent and Trademark Office (Office) is
clarifying its general policies on addressing requests for reexamination of
fewer than all the claims in a patent, and on conducting examination
following requests that fail to raise a substantial new question of
patentability (SNQ) for some of the claims requested (but do raise a SNQ as
to at least one claim requested).
1. The request for reexamination: If reexamination is requested for fewer
than all of the patent claims, the Office's determination on the request
(the order granting or denying reexamination) will generally be based on a
review on the merits of only the claim(s) for which reexamination was
requested.
2. The examination stage of a reexamination proceeding: In the
examination stage of the proceeding, the Office will generally only examine
claims for which a) reexamination was requested, and b) a substantial new
question of patentability (SNQ) was raised.
This policy facilitates the Office's compliance with its
statutory mandate for special dispatch in handling reexamination
proceedings. In appropriate instances, however, the Office may (in its
sole discretion) decide to examine some or all of the non-requested
claims (provided that at least one SNQ has been established by the
request or has been sua sponte determined to exist by the Office).
B. Background:
The Office receives requests for reexamination that do not
request reexamination for all of the patent claims, with a statement of
a SNQ provided for only the claims for which reexamination is
requested. If the Office addresses the claims for which reexamination
was not requested, the Office does so without the benefit of input or
guidance from the reexamination requester as to how the prior art would
be applied to the non-requested claims. Often, this consumes
significant resources on the part of the Office. Further, both the
ex parte and the inter partes reexamination statutes mandate special
dispatch within the Office in resolving the SNQ for the requested claims
(35 U.S.C. Secs. 305 and 314(c), respectively); yet, the additional time
expended by the Office to address claims for which reexamination was not
requested generally adversely affects the "dispatch" provided to the
requested claims. Even further, the non-requested claims may be claims
that are being currently litigated, thus introducing complexities
delaying the proceeding as to the requested claims, and, in the case of
inter partes reexamination, may require determinations as to whether
the non-requested claims are barred by estoppel under 35 U.S.C. 317.
This even further runs counter to the statutory mandate to address the
requested claims with special dispatch.
Recently, the Office issued an interim rule making Clarification of
Filing Date Requirements for Ex Parte and Inter Partes Reexamination
Proceedings, 71 FR 9260 (Feb. 23, 2006), 1304 Off. Gaz. Pat. Office 95
(Mar. 21, 2006), requiring that a request for reexamination must meet all
the applicable statutory and regulatory requirements before a filing date
is accorded to the request for reexamination. (A final rule making has
now issued, - 71 FR 44219 (Aug. 4, 2006), 1309 Off. Gaz. Pat. Office 216
(Aug. 29, 2006).) As a result of the interim rule making, the Office has
been experiencing an increasing volume of reexamination requests that
present a SNQ for only a limited number of the patent claims, instead
of all of the claims of the patent.
Prior to the August 2006 Revision 5 of the eighth edition of
the Manual of Patent Examining Procedure (MPEP), MPEP Sec. 2258(IV)(B)
(8th ed. 2001) (Rev. 3, August 2005) stated for ex parte
reexamination that "[e]ven when a request for reexamination does
not present a substantial new question as to all `live' claims (i.e.,
each existing claim not held invalid by a final decision, after all
appeals[)], each claim of the patent will be reexamined." Likewise,
MPEP Sec. 2658(IV)(B) (supra), stated for inter partes reexamination
that "[a]lthough a request for reexamination may not specify all claims as
presenting a substantial new question, each `live' claim (i.e., each
existing claims not held invalid by a final decision, after all appeals)
of the patent will be reexamined." This language has resulted in a public
perception that the Office is required to examine all claims of a patent,
once ex parte reexamination pursuant to 35 U.S.C. 302, or inter
partes reexamination pursuant to 35 U.S.C. 311, is requested for
at least one claim of a patent and the Office then determines that a
SNQ is raised for at least one claim. This perception is not, however,
correct, as the Office is not required to examine the remaining claims;
rather, the Office has the discretion to do so, or not to do so. See
(8th ed. 2001) (Rev. 3, August 2005) MPEP Sec. 2240 ("In the examination
stage of the reexamination, normally all patent claims will be
reexamined . . ." [Emphasis added]), Sec. 2640 ("In the examination stage
of the reexamination, usually all the patent claims will be
reexamined . . ." [Emphasis added]), Secs. 2243 and 2643
(". . . reexamination will be ordered and will normally cover all claims"
[Emphasis added]), and Secs. 2288 and 2688 ("The certificate will . . .
identify any patent claims not reexamined.").
This matter was squarely addressed on May 22, 2006, by the U.S.
District Court for the Eastern District of Virginia, in Sony
Computer Entertainment America Inc., et al. v. Jon W. Dudas, Civil
Action No. 1:05CV1447 (E.D.Va. May 22, 2006), Slip Copy, 2006 WL
1472462. The District Court upheld the Office's discretion to not
reexamine the non-requested claims of two patents in an inter
partes reexamination proceeding. The District Court stated as
follows:
"AIPA Secs. 311-313 make clear that inter partes reexamination
is not an all-or-nothing proposition; rather, the scope of
reexamination need not exceed those claims for which inter partes
review has been requested. To begin with, 35 U.S.C. Sec. 311(b)(2)
makes clear that "[t]he request [for inter partes review]
shall . . . set forth the pertinency and manner of applying cited
prior art to every claim for which reexamination is requested."
(emphasis added). Similarly, Sec. 312 provides that "[n]ot later
than 3 months after the filing of a request for inter partes
reexamination under Section 311, the [PTO] shall determine whether
a substantial new question of patentability affecting any claim of
the patent concerned is raised by the request . . ." (emphasis
added). By referencing Sec. 311, Congress made clear that the
"request" for inter partes review mentioned in Sec. 312 is claim-
specific, not: patent-wide. Section 313 supports the inference
that Congress intended inter partes review to be claim-specific, as
it provides that "[i]f, in a determination made under section
312(a), the [PTO] finds that a substantial new question of
patentability affecting a claim of a patent is raised, the
determination shall include an order for inter partes reexamination
for the patent for resolution of the question." (emphasis added).
By referencing Sec. 312, which itself references Sec. 311,
Sec. 313 makes clear that the scope of the PTO's investigation
extends only to those claims (i) for which reexamination has been
requested; and (ii) for which the PTO has determined there exists a
substantial question of validity. Had Congress intended
reexamination to extend to all claims under the patent, it would
have left out the final phrase "resolution of the question." Thus,
Sec. 313 would have read " . . . [when] the [PTO] finds that a
substantial new question of patentability affecting a claim of a
patent is raised, the determination shall include an order for
inter partes reexamination for the patent." Yet Congress did not
draft Sec. 313 in this manner. Read in conjunction with Secs. 312
and 311, then, Sec. 313 makes pellucidly clear that the scope of
inter partes review is limited only to those claims for which review
is requested and as to which the PTO finds a substantial question of
validity. Because Sony's proffered interpretation would effectively
read the final phrase of Sec. 313 out of the statute, it must be
rejected. See Discover Bank v. Vaden, 396 F.3d 366, 369 (4th Cir.
2005) ("It is a classic canon of statutory construction that courts
must give effect to every provision and word in a statute and avoid
any interpretation that may render statutory terms meaningless or
superfluous . . .".
"To be sure, a party may seek, and the PTO may grant, inter partes
review of each and every claim of a patent. Moreover, while the PTO
in its discretion may review claims for which inter partes review
was not requested, nothing in the statute compels it to do so. To
ensure that the PTO considers a claim for inter partes review,
Sec. 311(b)(2) requires that the party seeking reexamination
demonstrate why the PTO should reexamine each and every claim for
which it seeks review. Here, it is undisputed that Sony did not seek
review of every claim under the '213 and '333 patents. Accordingly,
Sony cannot now claim that the PTO wrongly failed to reexamine
claims for which Sony never requested review, and its argument that
AIPA compels a contrary result is unpersuasive."
[Sony, Slip opinion, at 8, 9] [Footnotes omitted] [Emphasis is original]
The court then pointed out that there is no conflict of the MPEP with
the statute and regulations,
"because other provisions of the MPEP provisions make clear that
the PTO need not always review all of a patent's claims during an
inter partes reexamination . . . Secs. 2640, 2643, and 2688 make
clear that while the PTO will generally reexamine all of a patent's
claims once it determines that a substantial question of
patentability exists as to one or more of the claims for which inter
partes reexamination is sought, the PTO has not committed itself to
do so in all cases. Here, the reason the PTO did not reexamine all
claims under the . . . patents is pellucidly clear: Sony never asked
the PTO to do so, as it was required to do pursuant to 35 U.S.C.
Sec. 311(b)(2)."
[Sony, Slip opinion, at 10, 11]
In short, the court found that neither the statute nor the MPEP
requires the Office to examine, on the merits, the non-requested
claims. While the Office has discretion to examine non-requested
claims, the Office may also choose not to examine non-requested claims.
C. Policy: The Office is clarifying its practice to make it clear that,
where reexamination is requested for fewer than all of the patent claims,
the Office's determination on the request (the order granting or denying
reexamination) will generally be limited to a review on the merits of only
the claim(s) for which reexamination was requested. In the examination stage
of the proceeding, the Office will generally examine only those claims for
which reexamination was requested, and for which a substantial new question
of patentability (SNQ) was raised.
Additionally, where a final decision of a federal court, after
all appeals, holds some of (one or more of) the patent claims invalid
or unenforceable, the claims held invalid or unenforceable will not be
reviewed on the merits in any reexamination proceeding. Further, review
on the merits of claims is barred in an inter partes reexamination
proceeding for any patent claim whose validity is upheld in a final decision
of a federal court, after all appeals, if the person who filed the request
was a party to that federal court litigation (or in privity with a party to
that federal court litigation). 35 U.S.C. 317(b). If reexamination of all
the patent claims becomes barred as a result of a federal court decision, a
reexamination proceeding cannot be initiated based on the patent, and the
Office will discontinue reexamination, if it has already been initiated.
Additional Information -
1. The present clarification in policy is made for both ex parte
reexamination and inter partes reexamination. The Sony decision's reasoning
and statutory interpretation apply analogously to ex parte reexamination,
as the same relevant statutory language applies to both inter partes and
ex parte reexamination. 35 U.S.C. Sec. 302 provides that the ex parte
reexamination "request must set forth the pertinency and manner of applying
cited prior art to every claim for which reexamination is requested"
[emphasis added], and 35 U.S.C. Sec. 303 provides that "the Director will
determine whether a substantial new question of patentability affecting any
claim of the patent concerned is raised by the request . . ." [Emphasis
added]. These provisions are analogous to the language of 35 U.S.C.
311(b)(2) and 35 U.S.C. 312 applied and construed in Sony, and would be
construed in the same manner. As the USPTO Director can decline to
reexamine non-requested claims in an inter partes reexamination proceeding,
the Director can likewise do so in ex parte reexamination proceeding.
2. It is noted that, in an instance where reexamination is not
requested as to a claim, the requester cannot complain as to the
Office's decision not to examine that claim in the reexamination, since
requester was free to request reexamination of all the claims of the
patent, but made the choice not to do so. In other words, if the
requester was interested in having all of the claims reexamined,
requester had the opportunity to do so when it filed its request for
reexamination but chose not to do so. In addition, 35 U.S.C. 302
requires that "[t]he request must set forth the pertinency and
manner of applying cited prior art to every claim for which
reexamination is requested." [Emphasis added]. Likewise, 35 U.S.C.
311(b)(2) requires that a requester "set forth the pertinency and
manner of applying cited prior art to every claim for which
reexamination is requested." [Emphasis added].
3. The Office has recently incorporated the substance of this
Notice, in MPEP Chapter 2200 for ex parte reexamination,
and MPEP Chapter 2600 for inter partes reexamination in the
August 2006 Revision 5 of the eighth edition of the MPEP.
D. Inquiries: Inquiries regarding this matter may be directed to
Kenneth M. Schor, Senior Legal Advisor, Office of Patent Legal
Administration at telephone: (571) 272-7710.
October 5, 2006 JAY P. LUCAS
Deputy Commissioner for
Patent Examination Policy