Post-Grant Patent Practice: Review & Reexamination Course Syllabus
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1 Post-Grant Patent Practice: Review & Reexamination Course Syllabus I. CHALLENGING PATENT VALIDITY AT THE PTO VIA POST-GRANT REVIEW, INTER PARTES REVIEW, BUSINESS METHOD PATENT REVIEW, AND REEXAMINATION 1. OVERVIEW OF TOOLS FOR CHALLENGING PATENTS A. Tools for Patent Challengers 1. Overview of Ex Parte Reexamination as a Tool for Patent Challengers 2. Overview of Inter Partes Reexamination 3. Overview of Inter Partes Review 4. Overview of Post-Grant Review 5. Overview of Business Method Patent Review B. Comparative Analysis of Post-Grant Options For the Patent Challenger 1. PTO Proceedings vs. Litigation 2. Ex Parte vs. Inter Partes Reexamination 3. Review vs. Reexamination 4. Choosing Among Review Proceedings 2. EX PARTE REEXAMINATION D. Congressional Intent E. Constitutionality F. Who Can File a Request For Reexamination? 1. Anyone 2. Statistics (% Patent Owner vs. % Third Party) G. When Can a Request For Reexamination be Filed? H. The PTO Decision Makers: The Central Reexamination Unit I. Criteria For Granting a Request For Reexamination 1. Must be Based on Printed Publication Prior Art 2. Must Raise a Patentability Question Under 35 U.S.C. 102 or Substantial New Question of Patentability 4. Statistics (% Granted vs. % Denied) J. How to File a Request for Ex Parte Reexamination 1. Request Requirements 3. Best Request Practices K. PTO Handling of a Request For Ex Parte Reexamination 1. Flowchart 2. Control Number Assigned 3. Assigned to CRU for Clerical Processing 4. SNQP Determination 1
2 5. Statutorily Required to Issue Order Granting or Denying Reexamination in Three Months 6. If the Request is Denied 7. If the Request is Granted 8. Statement by Patent Owner (Only if Requester is Third Party) L. Ex Parte Reexamination Prosecution 1. Flowchart 2. Preliminary Amendments 3. First Office Action 4. Interviews 5. Patent Owner s Response 6. Supplemental Responses 7. Second Office Actions 8. After-Final Practice in Reexamination 9. Notice of Intent to Issue Reexamination Certificate 10. Reexamination Certificate 11. Reexamination Proceedings are Publicly Open on PAIR 12. Prohibition Against Participation by Third Parties, Including a Third-Party Requester M. Appeal in Ex Parte Reexamination 1. Participatory Rights 2. Appeal to Board 3. Court Appeal N. Serial Requests and Multiple PTO Proceedings 1. Notice of Prior or Concurrent Proceedings 2. Subsequent Request After Denial of Earlier Request 3. Subsequent Request Filed During Pendency of Earlier Reexamination 4. Subsequent Request After Allowance 5. Subsequent Request After Reexamination Certificate 6. Subsequent Request Filed by a Different Requester 7. Merger, Suspension, and Multiple PTO Proceedings 8. Quasi Inter Partes Ex Parte Reexamination O. Statistics For Ex Parte Reexamination Results and Pendency P. Concurrent Reexamination and Litigation Proceedings, and Their Interplay 1. Stay of Litigation Pending Reexamination 2. No Stay of Reexamination Pending Litigation 3. Concurrent Reexamination and Litigation 4. Preliminary Injunctions and Reexamination 5. Permanent Injunctions and Reexamination 6. ITC Exclusion Orders and Reexamination 7. Supplemental Pleadings After Certificate 8. Admissibility of Pending Reexamination 9. Court Orders Relating to Reexamination 10. Discovery in Litigation and the Duty of Disclosure to the PTO During Reexamination 11. Reexamination Considerations For Protective Orders 12. Reexamination Considerations For Multi-Defendant Cases 13. Post-Judgment Reexamination Determinations 2
3 Q. Consequences of Ex Parte Reexamination on Litigation of Validity Issues 1. No Official Estoppel on Third-Party Requester But There is an Unofficial Estoppel Effect 2. Heightened Presumption of Validity if Claims Survive 3. Broadened Claims Are Invalid R. Consequences of Reexamination on Litigation of Infringement Issues 1. Effective Date of New or Amended Claims 2. Intervening Rights 3. Opening up Design-Around Possibilities 4. Effects of Reexamination Prosecution History S. Consequences of Reexamination on Litigation of Enforceability Issues 1. Inequitable Conduct During Prior Prosecution 2. Inequitable Conduct During Reexamination T. Consequences of Reexamination on Litigation of Other Defenses 1. Laches 2. Willfulness U. Strategic Considerations 1. General Strategic Considerations For Weighing Reexamination Against Litigation 2. Strategic Considerations For Patent-Owner Requesters 3. Strategic Considerations For Third-Party Requesters 3. INTER PARTES REEXAMINATION D. Congressional Intent E. Who Can File a Request For Inter Partes Reexamination? 1. Only Third Parties Can File 2. Requester Must Not be Estopped From Requesting 3. Generally Not Permitted if Inter Partes Reexamination Already Pending 4. Statistics (Requests by Technology) F. When Can a Request be Filed? 1. Anytime During the Enforceable Life of a Patent 2. Only For Patent From Application Filed on or After November 29, Request Date Affects Requester s Appeal Rights G. Criteria For Granting a Request 1. Same as For Ex Parte Reexamination Request 2. Statistics (% Granted vs. % Denied) H. How to File a Request For Inter Partes Reexamination 1. Request for Inter Partes Reexamination Requirements I. PTO Handling of a Request For Inter Partes Reexamination 1. Flowchart 2. Control Number Assigned 3. Assigned to CRU For Clerical Processing 4. SNQP Determination 5. Statutorily Required to Issue Order Granting or Denying Reexamination in Three Months 3
4 6. If Request is Denied 7. Challenging an Order Granting Inter Partes Reexamination J. Inter Partes Reexamination Prosecution 1. Flowchart 2. Preliminary Amendments Probably Not Permitted 3. First Office Action (May Accompany Order Granting Inter Partes Reexamination) 4. No Interviews 5. Patent Owner s Response 6. Supplemental Responses 7. Third-Party Requester Comments 8. Subsequent Office Actions 9. Near-Final and After-Final Practice in Reexamination 10. Notice of Intent to Issue Reexamination Certificate 11. Reexamination Certificate 12. Reexamination Proceedings are Publicly Open on PAIR K. Appeal in Inter Partes Reexamination 1. Appeal to Board 2. Federal Circuit Appeal L. Multiple PTO Proceedings 1. Notice of Prior or Concurrent Proceedings 2. Who May File a Subsequent Request for Reexamination? 3. Substantial New Question of Patentability 4. Multiple PTO Proceedings: Merger, Suspension, or Concurrent Prosecution M. Petition Practice N. Statistics For Inter Partes Reexamination Results and Pendency O. Concurrent Reexamination and Litigation Proceedings and Their Interplay 1. Stay of Litigation Pending Inter Partes Reexamination 2. Suspension of Reexamination Pending Litigation 3. Effect on Inter Partes Reexamination of Termination of Litigation 4. Otherwise Litigation Interplay is the Same as With Ex Parte Reexamination P. Consequences of Inter Partes Reexamination on Litigation 1. Consequences For Validity Issues: Estoppel 2. Consequences For Infringement, Liability, and Damages Issues 3. Consequences For Enforceability Issues Q. Strategic Considerations 1. Same General Strategic Considerations For Weighing Reexamination Against Litigation as With Ex Parte Reexamination 2. Inter Partes vs. Ex Parte Reexamination 4. INTER PARTES REVIEW 4
5 D. Congressional Intent E. Who Can File a Petition For Inter Partes Review? 1. Generally Anyone 2. Certain Litigants Are Restricted in Whether and When They Petition For Inter Partes Review F. When Can a Petition for Inter Partes Review be Filed? 1. Effective Date of Inter Partes Review Laws 2. No Eligibility Cutoff Based on Patent s Filing Date 3. Must Wait Nine Months After Grant of Patent 4. Infringement Defendant Must File Petition Within One Year 5. Inter Partes Review is Not Available After a Declaratory Judgment Action 6. Only a Limited Number of Inter Partes Reviews May be Permitted Through 2020 G. Criteria For Granting a Petition For Inter Partes Review 1. Initiation Threshold 2. Requirement to Raise New Issues H. How to File a Petition for Inter Partes Review 1. Request Requirements I. Pre-Notice Process For Inter Partes Review 1. PTO Handling of a Petition For Inter Partes Review 2. Owner s Preliminary Response 3. PTO Decision 4. Notice of Review J. Post-Notice Process for Inter Partes Review 1. Owner s Response to Notice 2. Discovery 3. Owner s Motion to Amend 4. Petitioner s Options 5. Settlement 6. Final Written Decision K. Appeal from Inter Partes Review L. Multiple Proceedings Involving an Inter Partes Review M. Effects of Inter Partes Review 1. Estoppel Arising From Inter Partes Review 2. Effects of New or Amended Claims 3. Effects of Review on Claim Construction 4. Effects of Review on Strength of Presumption of Validity 5. Effects of Review on Enforceability Issues 6. Effects of Review on Other Subsequent Litigation Issues N. Concurrent Inter Partes Review and Litigation 1. Stay of Litigation Pending Review 2. Interplay Between Inter Partes Review and Litigation O. Strategic Considerations 1. Choosing Between Inter Partes Review and Litigation 5
6 2. Choosing Between Inter Partes Review and Ex Parte Reexamination 3. Other Strategic Considerations 5. POST-GRANT REVIEW D. Congressional Intent E. Who Can File a Petition for Post-Grant Review? 1. Generally Anyone 2. Certain Litigants Are Restricted in Whether and When They Can Petition For Post-Grant Review F. When Can a Petition For Post-Grant Review be Filed? 1. Effective Date of Post-Grant Review Laws 2. No Eligibility Cutoff Based on Patent s Filing Date 3. Only Patents Governed by the AIA s First-Inventor-to-File Rules Are Eligible For Post-Grant Review 4. Petition Must be Filed Within the Initial Nine Months From Grant 5. Post-Grant Review is Not Available After a Declaratory Judgment Action G. Criteria for Granting a Petition For Post-Grant Review 1. Initiation Threshold 2. Requirement to Raise New Issues H. How to File a Petition For Post-Grant Review 1. Request Requirements I. Pre-Notice Process For Post-Grant Review 1. PTO Handling of a Petition For Post-Grant Review 2. Owner s Preliminary Response 3. PTO Decision 4. Notice of Review J. Post-Notice Process For Post-Grant Review 1. Owner s Response to Notice 2. Discovery 3. Owner s Motion to Amend 4. Petitioner s Options 5. Settlement 6. Final Written Decision K. Appeal From Post-Grant Review Decision L. Multiple Proceedings Involving a Post-Grant Review M. Effects of Post-Grant Review 1. Estoppel Arising From Post-Grant Review 2. Effects of New or Amended Claims 3. Effects of Review on Claim Construction 4. Effects of Review on Strength of Presumption of Validity 5. Effects of Review on Enforceability Issues 6. Effects of Review on Other Subsequent Litigation Issues 6
7 N. Concurrent Post-Grant Review and Litigation 1. Stay of Litigation Pending Review 2. Interplay Between Post-Grant Review and Litigation O. Strategic Considerations 1. Choosing Between Post-Grant Review and Litigation 2. Choosing Between Post-Grant Review and Ex Parte Reexamination 3. Other Strategic Considerations 6. TRANSITIONAL PROGRAM FOR REVIEW OF BUSINESS METHOD PATENTS D. Congressional Intent E. Who Can File a Petition For Business Method Patent Review? 1. Generally Anyone 2. Certain Litigants Are Restricted in Whether and When They Can Petition For Business Method Patent Review F. When Can a Petition For Business Method Patent Review be Filed? 1. Effective Date of Business Method Patent Review Laws 2. No Eligibility Cutoff Based on Patent s Filing Date 3. Only Patents Governed by the AIA s First-Inventor-to-File Rules Are Eligible For Business Method Patent Review 4. Petition Must be Filed Within the Initial Nine Months From Grant 5. Business Method Patent Review is Not Available After a Declaratory Judgment Action G. Criteria For Granting a Petition for Business Method Patent Review 1. Initiation Threshold 2. Requirement to Raise New Issues H. How to File a Petition For Business Method Patent Review 1. Request Requirements I. Pre-Notice Process For Business Method Patent Review 1. PTO Handling of a Petition For Business Method Patent Review 2. Owner s Preliminary Response 3. PTO Decision 4. Notice of Review J. Post-Notice Process For Business Method Patent Review 1. Owner s Response to Notice 2. Discovery 3. Owner s Motion to Amend 4. Petitioner s Options 5. Settlement 6. Final Written Decision K. Appeal From Business Method Patent Review Decision L. Multiple Proceedings Involving a Business Method Patent Review M. Effects of Business Method Patent Review 7
8 1. Estoppel Arising From Business Method Patent Review 2. Effects of New or Amended Claims 3. Effects of Review on Claim Construction 4. Effects of Review on Strength of Presumption of Validity 5. Effects of Review on Enforceability Issues 6. Effects of Review on Other Subsequent Litigation Issues N. Concurrent Business Method Patent Review and Litigation 1. Stay of Litigation Pending Review 2. Interplay Between Business Method Patent Review and Litigation O. Strategic Considerations 1. Choosing Between Business Method Patent Review and Litigation 2. Choosing Between Business Method Patent Review and Ex Parte Reexamination 3. Other Strategic Considerations 8
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