Archive for category: MPEP Q and A Podcast

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Question:

Name one instance when issuance of a NIRC action would be proper in an inter partes reexamination proceeding.

Answer:

The following are the only instances when issuance of a NIRC action would be proper in an inter partes reexamination proceeding:

• There is no timely response by the patent owner to an Office action requiring a response. If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). All claims will be canceled by formal examiner’s amendment.
• After a Right of Appeal Notice (RAN) where no party to the reexamination timely files a notice of appeal.
• After filing of a notice of appeal, where all parties who filed a notice of appeal or notice of cross appeal fail to timely file an appellant brief (or fail to timely complete the brief, where the appellant brief is noted by the examiner as being incomplete).
• After a final decision by the Board, where there is no further timely appeal to the Court of Appeals for the Federal Circuit nor is there a timely request for rehearing by the Board.
• After the Federal Court appeal process has been completed and the case is returned to the examiner.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers Optional Inter Partes Reexamination.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2687 of the MPEP.  The following is a brief summary of this section:

2687  Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) and Conclusion of Reexamination Proceeding

Upon conclusion of the inter partes reexamination proceeding, the examiner must complete a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). If appropriate, an examiner’s amendment will also be prepared. Where the claims are found patentable, reasons must be given for each claim found patentable.

This section covers further details on the NIRC such as instances where a NIRC would be appropriate, preparation of the NIRC action, examiner’s amendment to place the proceeding in condition for notice of intent to issue an inter partes reexamination certificate, reasons for patentability and/or confirmation, preparation of the case for publication, and reexamination proceedings in which all the claims are canceled.

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Question:

What are the two final rules dealing with the claim construction standard as implemented in the supplement entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”?

Answer:

In the first final rule, the Office changed the existing rules to, among other things:

1. Increase the page limit for patent owner’s motion to amend by ten pages and allow a claims appendix to be filed with the motion; and
2. increase the page limit for petitioner’s reply to patent owner’s response by ten pages.

In the second final rule, the Office changed the existing rules to, among other things:

1. Allow new testimonial evidence to be submitted with a patent owner’s preliminary response;
2. allow a claim construction approach that emulates the approach used by a district court for claims of patents that will expire before entry of a final written decision;
3. replace page limits with word count limits for major briefing; and
4. add a Rule 11-type certification for papers filed in a proceeding.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

The following is a summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

• In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
• This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
• The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

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Question:

What must an application filed under 37 CFR 1.53(d) be filed before the earliest of?

Answer:

An application filed under 37 CFR 1.53(d) must be filed before the earliest of:

• (A) payment of the issue fee on the prior application, unless a petition is granted in the prior application;
• (B) abandonment of the prior application; or
• (C) termination of proceedings on the prior application.

Chapter Details:

The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and Handling of Mail and Papers.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 506 of the MPEP.  The following is a brief summary of this section:

506    Completeness of Original Application

This section covers the completeness of the original application including both nonprovisional and provisional applications. A Notice of Incomplete Application will be mailed for incomplete nonprovisional applications. The filing date will not be granted until the nonprovisional application is deemed complete. In addition, no filing date will be granted for an incomplete provisional application.

Applications are deemed informal and therefore not granted a filing date for numerous reasons including if it is typed on both sides of the paper.

A discussion on filing dates for nonprovisional and provisional applications is also included in this section.

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Question:

When will the changes to the claim construction standard as outlined in “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” apply?

Answer:

As shown in the supplement …

The changes to the claim construction standard will apply to proceedings where a petition is filed on or after the effective date of the final rule (November 13, 2018).

• The Office will apply the federal court claim construction standard, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), which is articulated in Phillips, to construe patent claims and proposed substitute claims in AIA proceedings in which trial has not yet been instituted before the effective date of the final rule.
• The Office will continue to apply the BRI standard for construing unexpired patent claims and proposed substitute claims in AIA proceedings where a petition was filed before the effective date of the final rule.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

The following is a summary of this supplement:

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

• In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
• This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
• The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.

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Question:

What is the executive summary of the final rule when dealing with the claim construction standard that took effect on November 13, 2018?

Answer:

This final rule revises the rules for IPR, PGR, and CBM proceedings that implemented provisions of the Leahy-Smith America Invents Act (‘‘AIA’’) providing for trials before the Office, by replacing the BRI (broadest reasonable interpretation) standard for interpreting unexpired patent claims and substitute claims proposed in a motion to amend with the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).

The rule adopts the same claim construction standard used by Article III federal courts and the ITC, both of which follow Phillips v. AWH Corp. and its progeny.

Under the final rule, the PTAB will apply in an AIA proceeding the same standard applied in federal courts to construe patent claims.

This final rule also amends the rules to add a new provision which states that any prior claim construction determination in a civil action or proceeding before the ITC regarding a term of the claim in an IPR, PGR, or CBM proceeding will be considered if that determination is timely filed in the record of the IPR, PRG or CBM proceeding.

Chapter Details:

This question comes from the following supplement “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question comes from the following supplement: “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board”. The supplement specifically covers details including the following…

The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) revises the claim construction standard for interpreting claims in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’).

• In particular, the Office is replacing the broadest reasonable interpretation (‘‘BRI’’) standard such that claims shall now be construed using the same claim construction standard that is used to construe the claim in a civil action in federal district court.
• This rule reflects that the PTAB in an AIA proceeding will apply the same standard applied in federal courts to construe patent claims.
• The Office also amends the rules to add that any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission (‘‘ITC’’), that is timely made of record in an IPR, PGR, or CBM proceeding will be considered.