The movie Zootopia was hysterically funny because it equated animal stereotypes to what we encounter every day. For example, the best employee at the DMV was named Flash – who was a sloth. Actually, the entire DMV was run by sloths. Some practitioners have commented how their reissue applications progress at a sloth's pace between filing and first examination.
This month, we focus on resurrecting invalidated patents that have no pending family members. This scenario limits options to a narrowing reissue or a patent owner-filed ex parte reexamination. Both can expose the patent to all avenues of unpatentability since amendments are being filed – §§ 101, 112, 102, 103, double patenting, etc. – but there are stark differences in what is required to file each, their advantages/disadvantages, and their speed.
In today’s culture of immediate feedback and gratification, one approaches reissue practice by taking the United States Patent and Trademark Office (USPTO) at its word. The USPTO says reissues are not eligible for Track One.1 The USPTO has explained that reissue applications cannot be on Track One because all reissues are prosecuted under special dispatch. For example, MPEP 1442: “Special Status: All reissue applications are taken up ‘special,’ and remain ‘special.’ All reissue applications…will be taken up for action ahead of other ‘special’ applications; this means that all issues not deferred will be treated and responded to immediately. Furthermore, reissue applications involved in litigation will be taken up for action in advance of other reissue applications.”
But is this really true? Here is a comparison between reissue and track one pendency.
It appears the USPTO’s Central Reexamination Unit – who now handles all reissues – accepts one year from filing to first action and two years to disposition (appeal, abandonment, allowance) as meeting the required “special” speed. Our firm has even seen 18 months pass between first and final Office actions. Yet these one- and two-year time frames have caused much angst for patent owners relying on reissues to save their invalidated patents for subsequent enforcement when those patents are nearing their end of patent term.
Earlier this year, the USPTO asked AIA patent owners to consider using reissue and reexamination for amendments. The USPTO even published a presentation on its study of the interplay of reissue, reexamination, and AIA proceedings. But if a patent that is in danger of being held invalid or that has been invalidated by the PTAB or a Court is expiring – which cuts off all rights to amend – how can patent owners be expected to use reissue if application pendency is so lengthy?
Many have argued that the USPTO needs a better system of prioritizing reissue applications or needs to expand its group of examiners for reissues in order for patent owners to trust the USPTO to timely take up an end of term patent that is being enforced. These pendency statistics appear to support the patent bar’s complaints about inadequacies of the current reissue system.
An alternative to amend claims in an invalidated patent is a patent owner-filed ex parte reexamination, which has required timelines to grant/denial of request for reexamination and to first office action – 3 months each. But the reexamination poses other issues. Namely, the patent owner cannot get a granted reexamination without finding new, non-cumulative prior art that raises a substantial new question of patentability. Then, the patent owner needs to prepare their own rejection of the claims under the new prior art. Finally, the patent owner needs to amend their claims around the prior art, and then explain why the claims are patentable.
Even after all this exposure of their patent, the examiner can deny the request for reexamination if the examiner finds that the new prior art does not pose a substantial new question. If denied, the only way to get the claims amended is to turn to a reissue application. Or, if the patent owner is willing to spend the additional time and money, it can file the reissue and reexamination at the same time, which raises other issues, such as merger of the proceedings and further delay.
A large deterrent of reexamination versus reissue is the lack of control for the patent owner – patent owners cannot withdraw their request for reexamination or stop prosecution before full appeal. And reexaminations lack the reissue application options of request for continued (re)examination, continuations/divisionals, and abandonment. So the speed advantages of a reexamination can be negated by these deficiencies when compared to reissue.
In the end, reissue is usually the most effective way to resurrect a patent, but at its relative sloth-like pace to first action and disposal can patent owners afford to use it?
1 – 59052 Federal Register/Vol. 76, No. 185/Friday, September 23, 2011/Rules and Regulations
This article appeared in the July 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.