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New Strategies for Third Parties The Role of New Third Party Preissuance Submissions Practice under the AIA

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Marc Hubbard
Marc Hubbard

The document discusses new strategies for third parties to challenge patents under the America Invents Act (AIA). It summarizes the limited options available prior to the AIA such as Rule 99 submissions and public protests. The AIA introduces new third party preissuance submissions that allow explanations of relevance and can be filed after publication. It also introduces new post-grant review proceedings that make the PTO a more attractive venue for resolving validity than previous inter partes reexaminations. However, preissuance submissions still have downsides like uncertainty if the examiner will consider the art and potential to tip off the applicant.

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New Strategies for Third Parties The Role of New Third Party Preissuance Submissions Practice under the AIA State Bar of Texas Marc A . Hubbard PATENT WORKSHOP 2012: PRACTICING GARDERE WYNNE SEWELL LLP UNDER THE NEW PATENT LAWS March 21, 2012 Houston, Texas
Agenda Questions "I'm tired of getting sued by my competitor. What else can we or should we be doing? "I heard that my competitor has applied for a patent on my process. What can I do about it?" Should we do something to try to stop continuations of this patent from issuing? Answer Current strategies for third parties New third party preissuance practice and how it 鍖ts with other changes made by America Invents Act New strategies
When/where to attack third party patent rights Before grant at PTO Stop grant, force narrowing amendment, create estoppel, etc. Rule 90 preissuance submissions; public protests; public use proceeding After grant at PTO Cancel claims, force narrowing amendment or statements After grant in district court Seek declaration that one or more claims invalid Combination
Pre-grant options at the PTO prior to September 16, 2012 are very limited 35 USC 則122(c) (c) PROTEST AND PRE-ISSUANCE OPPOSITION. - The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant. Current options are limited to Rule 99 third party submissions under 37 C.F.R. 1.99 (Rule 99 submissions) Public protests under 37 C.F.R. 則1.291 Public use proceedings under 37 C.F.R. 則 1.292
Rule 99 (current) third party submission practice Must be 鍖led not later than 2 months after publication Unless patents or printed publications could not earlier have been presented But never after mailing of the notice of allowance Must identify the application; impractical before publication Each submission limited to 10 patents or printed publications No explanation of relevance permitted because of 35 USC 122(C) If before publication, better to use public protest because explanation can be provided No further participation permitted
Public protests under 37 C.F.R. 則1.291 Explanation of relevance of cited documents must be included Only permitted prior to date of publication Must adequately identify the application (in order to be matched to the 鍖le) Real party in interested may only 鍖le one, unless issues signi鍖cantly different and could not have been presented earlier No further participation allowed by protester
Public use proceedings under 37 C.F.R. 則 1.292 Public use and "on sale" issues only Petition must be 鍖led prior to date of publication Per PTO proceedings are "very rare" they "seldom" lead to rejection of any claims See MPEP 則720 for details
Post-grant options: reexamination Due to limited pre-grant options, third party PTO practice focuses on reexamination Ex parte reexamination under 35 USC 則302 Problem: lack of opportunity to participate after initiation Inter partes reexamination under 35 USC 則311 Allows for third party participation Relatively high "kill rates But, they can be expensive, and there is estoppel
Reexamination not common; mostly a litigation tool
Current options do little to encourage routine 3rd party participation at PTO Pre-grant procedures very limited and likely rarely used Generally, Rule 99 submissions seem inadvisable unless highly con鍖dent in outcome Not a compelling enough opportunity to justify watching publications of application in most cases Protest and public use require ability to identify and know details of an unpublished application Practically speaking, limited mostly to reissues Available reexamination procedures appear to be attractive mostly in context of litigation; not something that a client would normally want to do in the scenarios mentioned in questions posed above
Relevant AIA changes starting September 16, 2012 New 則122(e) speci鍖cally authorizes third party submissions with explanation Intended to encourage third parties to submit relevant prior art during examination New "reviews" in place of inter partes reexamination -- post grant review, inter partes review and covered business method patents Intended to make PTO more attractive venue for resolving patent validity issues High cost and complexity likely to limit them to situations in which litigation is at least possible or likely
PTO proposed changes to rules effective September 16, 2012 Public use proceedings and Rule 99 third party submissions to be eliminated Public protests still available, but with a few changes Allowed after publication, but before allowance, if applicant gives written consent Formal requirements mirror those for Rule 290 preissuance submissions.
New third party preissuance submissions under 35 USC 122(e) / Rule 290 basics Anybody may submit unless that party owes a Rule 56 duty in the application No requirement to identify the real party in interest All applications are eligible, regardless of 鍖ling date, except for provisional applications Utility, design, reissue and plant Application can be abandoned Fee: $180 per ten items submitted No fee if 3 or few items submitted with a statement that it is the 鍖rst and only 鍖ling by submitter and those in privity with the submitter
New third party preissuance submissions what can be submitted Limited to 10 pieces of information per submission patents and printed publications only Declarations considered a printed publication Used to prove up dates of publication Can point out 101 and 112 issues using a declaration Declarations do not count toward limit if not listed and included only to establish dates May make more than one submission However, if submitting 3 or fewer items without paying fee, may not cite any more documents
Third party preissuance submissions concise description of relevance Submitter must explain why document submitted and potential relevance to the examination A bare statement that the document is relevant is not a concise description PTO will not otherwise valuate the sufficiency of the concise description PTO suggested best practices: Point out the relevant pages or lines of the respective document Use format that would best explain to the examiner the relevance of the document, such as in a narrative description or a claim chart Avoid verbose description
Third party preissuance submissions time limits Must be 鍖led before date of mailing of 鍖rst rejection or, if no rejection, allowance But, may submit any time within 6 months of publication unless allowance mailed Will not be entered if 鍖led after mailing of notice of allowance
Will AIA change pre-grant strategies? Generally, pre-grant options will be more attractive Ability to explain how to apply the prior art and expanded window for submission make pre-issuance submissions much more attractive No estoppel Public protest can still be used if necessary But, there are still downsides of preissuance submissions
No guarantee that the examiner will give the documents careful consideration No further involvement by submitter will be permitted Applicant will have the opportunity to amend the claims and argue against the submitted references without any further input from the submitter Courts and juries may give deference to cited document having been considered Holding back of best or equally good documents might be an option when there are multiple documents available Citing fewer, but well selected documents might actually give better results
Preissuance submission will put applicant on notice Nature of the prior art and the arguments may tip off applicant as to issues Applicant likely to amend to fortify claims against cited prior art Applicant may be more circumspect in remarks Applicant may 鍖le continuation as a precaution
Possible impairment of ex parte reexamination opportunities Although no estoppel, preissuance submission may impair ability to establish a substantial new question of patentability for ex parte reexamination Submitter may not be giving up much; ex parte generally not attractive
Effect of post grant and inter partes review on preissuance submission Review should still be an option even if reference submitted prior to issue Threshold for review: reasonable likelihood that challenged claim is unpatentable (IPR) or claim more likely than not is unpatentable (PGR) Whether there is a substantial new question of patentability, is irrelevant to initiation APJs make decision; consideration by examiner should carry no weight Early success with PGR and IP may embolden third parties to try preissuance submissions High costs of PGR / IPR might encourage early knockout attempts with preissuance submissions
Additional factors to consider Quality of the prior art and the clients desired result Prior art that anticipates all the claims or the client practices what is disclosed by the reference better than prior art that leaves room for applicant to maneuver State of examination Claims are moving target; published claims may change substantially However, if theres been an Office action, and even a response, supplying a the reference might make a big difference in the outcome
Watching application publications Other than cost, there appears to be little downside to watching publications: No patent, no objectively high risk of infringement. Cf. In re Seagate Technology LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc) Not aware of duty to watch for grant But what to watch for and how to evaluate timely and cost- effectively evaluate hits? Watching for publication continuations and divisionals of problematic patents much more easily justi鍖ed than watching every dozens of subclasses Those watching only grants may now have reason to watch applications instead of or in addition to grants
"I heard that my competitor has applied for a patent on my process" Do nothing Options are very limited and expensive; better off not knowing about it; decide when sued New prior commercial use defense under AIA of help? Rely on huge patent portfolio Maybe 鍖le an application (interference or, in the future, derivation proceeding) If doing nothing not appealing, look for patent application or start watching for it and, if found Evaluate scope of patent and defenses / design around Evaluate whether it makes sense to take action in PTO, wait until grant and then challenge with post grant procedures, or wait until sued
"I'm tired of getting sued by my competitor. What else can we do? Clearance searches Options at PTO still not great; better to identify problematic patents in time to allow for designing around Patent application and grant watching Opportunity to design around might be limited, so needs to be done primarily for purposes of pre-grant or post- grant action Watching grants may create exposure to willful infringement
Conclusion Those who have been watching publications will likely continue Whether preissuance submission practice will entice others to start is uncertain Rule 290 Preissuance submissions certainly a lot more attractive, but there are downsides to consider Might make sense when dealing with continuations, etc., of problematic patents Availability of post grant review and inter partes review might make preissuance submissions seem less of a risk
New Strategies for Third Parties The New Third Party Preissuance Submissions Practice under the AIA Marc Hubbard | Partner Gardere Wynne Sewell LLP 1601 Elm Street, Suite 3000 | Dallas, TX 75201 214.999.4880 direct 214.208.2601 cell 214.999.3880 fax mhubbard@gardere.com www.gardere.com 27

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New Strategies for Third Parties The Role of New Third Party Preissuance Submissions Practice under the AIA

  • 1. New Strategies for Third Parties The Role of New Third Party Preissuance Submissions Practice under the AIA State Bar of Texas Marc A . Hubbard PATENT WORKSHOP 2012: PRACTICING GARDERE WYNNE SEWELL LLP UNDER THE NEW PATENT LAWS March 21, 2012 Houston, Texas
  • 2. Agenda Questions "I'm tired of getting sued by my competitor. What else can we or should we be doing? "I heard that my competitor has applied for a patent on my process. What can I do about it?" Should we do something to try to stop continuations of this patent from issuing? Answer Current strategies for third parties New third party preissuance practice and how it 鍖ts with other changes made by America Invents Act New strategies
  • 3. When/where to attack third party patent rights Before grant at PTO Stop grant, force narrowing amendment, create estoppel, etc. Rule 90 preissuance submissions; public protests; public use proceeding After grant at PTO Cancel claims, force narrowing amendment or statements After grant in district court Seek declaration that one or more claims invalid Combination
  • 4. Pre-grant options at the PTO prior to September 16, 2012 are very limited 35 USC 則122(c) (c) PROTEST AND PRE-ISSUANCE OPPOSITION. - The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant. Current options are limited to Rule 99 third party submissions under 37 C.F.R. 1.99 (Rule 99 submissions) Public protests under 37 C.F.R. 則1.291 Public use proceedings under 37 C.F.R. 則 1.292
  • 5. Rule 99 (current) third party submission practice Must be 鍖led not later than 2 months after publication Unless patents or printed publications could not earlier have been presented But never after mailing of the notice of allowance Must identify the application; impractical before publication Each submission limited to 10 patents or printed publications No explanation of relevance permitted because of 35 USC 122(C) If before publication, better to use public protest because explanation can be provided No further participation permitted
  • 6. Public protests under 37 C.F.R. 則1.291 Explanation of relevance of cited documents must be included Only permitted prior to date of publication Must adequately identify the application (in order to be matched to the 鍖le) Real party in interested may only 鍖le one, unless issues signi鍖cantly different and could not have been presented earlier No further participation allowed by protester
  • 7. Public use proceedings under 37 C.F.R. 則 1.292 Public use and "on sale" issues only Petition must be 鍖led prior to date of publication Per PTO proceedings are "very rare" they "seldom" lead to rejection of any claims See MPEP 則720 for details
  • 8. Post-grant options: reexamination Due to limited pre-grant options, third party PTO practice focuses on reexamination Ex parte reexamination under 35 USC 則302 Problem: lack of opportunity to participate after initiation Inter partes reexamination under 35 USC 則311 Allows for third party participation Relatively high "kill rates But, they can be expensive, and there is estoppel
  • 9. Reexamination not common; mostly a litigation tool
  • 10. Current options do little to encourage routine 3rd party participation at PTO Pre-grant procedures very limited and likely rarely used Generally, Rule 99 submissions seem inadvisable unless highly con鍖dent in outcome Not a compelling enough opportunity to justify watching publications of application in most cases Protest and public use require ability to identify and know details of an unpublished application Practically speaking, limited mostly to reissues Available reexamination procedures appear to be attractive mostly in context of litigation; not something that a client would normally want to do in the scenarios mentioned in questions posed above
  • 11. Relevant AIA changes starting September 16, 2012 New 則122(e) speci鍖cally authorizes third party submissions with explanation Intended to encourage third parties to submit relevant prior art during examination New "reviews" in place of inter partes reexamination -- post grant review, inter partes review and covered business method patents Intended to make PTO more attractive venue for resolving patent validity issues High cost and complexity likely to limit them to situations in which litigation is at least possible or likely
  • 12. PTO proposed changes to rules effective September 16, 2012 Public use proceedings and Rule 99 third party submissions to be eliminated Public protests still available, but with a few changes Allowed after publication, but before allowance, if applicant gives written consent Formal requirements mirror those for Rule 290 preissuance submissions.
  • 13. New third party preissuance submissions under 35 USC 122(e) / Rule 290 basics Anybody may submit unless that party owes a Rule 56 duty in the application No requirement to identify the real party in interest All applications are eligible, regardless of 鍖ling date, except for provisional applications Utility, design, reissue and plant Application can be abandoned Fee: $180 per ten items submitted No fee if 3 or few items submitted with a statement that it is the 鍖rst and only 鍖ling by submitter and those in privity with the submitter
  • 14. New third party preissuance submissions what can be submitted Limited to 10 pieces of information per submission patents and printed publications only Declarations considered a printed publication Used to prove up dates of publication Can point out 101 and 112 issues using a declaration Declarations do not count toward limit if not listed and included only to establish dates May make more than one submission However, if submitting 3 or fewer items without paying fee, may not cite any more documents
  • 15. Third party preissuance submissions concise description of relevance Submitter must explain why document submitted and potential relevance to the examination A bare statement that the document is relevant is not a concise description PTO will not otherwise valuate the sufficiency of the concise description PTO suggested best practices: Point out the relevant pages or lines of the respective document Use format that would best explain to the examiner the relevance of the document, such as in a narrative description or a claim chart Avoid verbose description
  • 16. Third party preissuance submissions time limits Must be 鍖led before date of mailing of 鍖rst rejection or, if no rejection, allowance But, may submit any time within 6 months of publication unless allowance mailed Will not be entered if 鍖led after mailing of notice of allowance
  • 17. Will AIA change pre-grant strategies? Generally, pre-grant options will be more attractive Ability to explain how to apply the prior art and expanded window for submission make pre-issuance submissions much more attractive No estoppel Public protest can still be used if necessary But, there are still downsides of preissuance submissions
  • 18. No guarantee that the examiner will give the documents careful consideration No further involvement by submitter will be permitted Applicant will have the opportunity to amend the claims and argue against the submitted references without any further input from the submitter Courts and juries may give deference to cited document having been considered Holding back of best or equally good documents might be an option when there are multiple documents available Citing fewer, but well selected documents might actually give better results
  • 19. Preissuance submission will put applicant on notice Nature of the prior art and the arguments may tip off applicant as to issues Applicant likely to amend to fortify claims against cited prior art Applicant may be more circumspect in remarks Applicant may 鍖le continuation as a precaution
  • 20. Possible impairment of ex parte reexamination opportunities Although no estoppel, preissuance submission may impair ability to establish a substantial new question of patentability for ex parte reexamination Submitter may not be giving up much; ex parte generally not attractive
  • 21. Effect of post grant and inter partes review on preissuance submission Review should still be an option even if reference submitted prior to issue Threshold for review: reasonable likelihood that challenged claim is unpatentable (IPR) or claim more likely than not is unpatentable (PGR) Whether there is a substantial new question of patentability, is irrelevant to initiation APJs make decision; consideration by examiner should carry no weight Early success with PGR and IP may embolden third parties to try preissuance submissions High costs of PGR / IPR might encourage early knockout attempts with preissuance submissions
  • 22. Additional factors to consider Quality of the prior art and the clients desired result Prior art that anticipates all the claims or the client practices what is disclosed by the reference better than prior art that leaves room for applicant to maneuver State of examination Claims are moving target; published claims may change substantially However, if theres been an Office action, and even a response, supplying a the reference might make a big difference in the outcome
  • 23. Watching application publications Other than cost, there appears to be little downside to watching publications: No patent, no objectively high risk of infringement. Cf. In re Seagate Technology LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc) Not aware of duty to watch for grant But what to watch for and how to evaluate timely and cost- effectively evaluate hits? Watching for publication continuations and divisionals of problematic patents much more easily justi鍖ed than watching every dozens of subclasses Those watching only grants may now have reason to watch applications instead of or in addition to grants
  • 24. "I heard that my competitor has applied for a patent on my process" Do nothing Options are very limited and expensive; better off not knowing about it; decide when sued New prior commercial use defense under AIA of help? Rely on huge patent portfolio Maybe 鍖le an application (interference or, in the future, derivation proceeding) If doing nothing not appealing, look for patent application or start watching for it and, if found Evaluate scope of patent and defenses / design around Evaluate whether it makes sense to take action in PTO, wait until grant and then challenge with post grant procedures, or wait until sued
  • 25. "I'm tired of getting sued by my competitor. What else can we do? Clearance searches Options at PTO still not great; better to identify problematic patents in time to allow for designing around Patent application and grant watching Opportunity to design around might be limited, so needs to be done primarily for purposes of pre-grant or post- grant action Watching grants may create exposure to willful infringement
  • 26. Conclusion Those who have been watching publications will likely continue Whether preissuance submission practice will entice others to start is uncertain Rule 290 Preissuance submissions certainly a lot more attractive, but there are downsides to consider Might make sense when dealing with continuations, etc., of problematic patents Availability of post grant review and inter partes review might make preissuance submissions seem less of a risk
  • 27. New Strategies for Third Parties The New Third Party Preissuance Submissions Practice under the AIA Marc Hubbard | Partner Gardere Wynne Sewell LLP 1601 Elm Street, Suite 3000 | Dallas, TX 75201 214.999.4880 direct 214.208.2601 cell 214.999.3880 fax mhubbard@gardere.com www.gardere.com 27

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