The USPTO issued guidance regarding procedures to stay when reissue or reexaminations are pending during a parallel AIA proceeding. The basic factors that will be considered are:

  • Whether the claims challenged in the AIA proceeding are the same as or depend directly or indirectly from claims at issue in the concurrent parallel Office proceeding;
  • Whether the same grounds of unpatentability or the same prior art are at issue in both proceedings;
  • Whether the concurrent parallel Office proceeding will duplicate efforts within the Office;
  • Whether the concurrent parallel Office proceeding could result in inconsistent results between proceedings (e.g., whether substantially similar issues are presented in the concurrent parallel Office proceeding);
  • Whether amending the claim scope in one proceeding would affect the claim scope in another proceeding;
  • The respective timeline and stage of each proceeding;
  • The statutory deadlines of the respective proceedings;
  • Whether a decision in one proceeding would likely simplify issues in the concurrent parallel Office proceeding or render it moot.

More interesting, the memo seems to add to the discretionary denial factors stating, “The Board also may deny institution under 35 U.S.C. 325(d) of a requested AIA trial proceeding if a parallel Office proceeding, for example, is in a more advanced stage and involves overlapping issues with the proposed AIA trial proceeding.”

The memo also provides factors for lifting a stay:

  • Whether factors considered when ordering the stay (i.e., factors indicating good cause) have changed from when the stay was ordered;
  • Whether the patent owner has requested adverse judgment or canceled all claims at issue in the AIA trial proceeding;
  • Whether the patent owner is requesting rehearing or appealing the final written decision in the AIA trial proceeding to the Federal Circuit;
  • Whether the patent owner agrees to abide by the estoppel provisions set forth in 37 CFR 42.73(d)(3) (i.e., not obtain a claim patentably indistinct from a claim cancelled or found unpatentable during an AIA trial proceeding); and
  • Whether lifting the stay would be in the interests of the efficient administration of the Office and integrity of the patent system (cf. 35 U.S.C. 316(b)).

Ultimately, the Office does not believe it is changing any procedures, just summarizing what has already been decided through the years.

This article appeared in the April 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.