1. Failing to Adequately Support a Substantial New Question of Patentability
Presentation of a proper substantial new question of patentability (”SNQ”) is the most important component of a reexamination request. By statute, the Office cannot grant a reexamination request that fails to establish an SNQ. 35 U.S.C. §§ 302-303, 312, 313. Many practitioners treat the SNQ as a mere formality. However, one of the most common reasons that reexamination requests are bounced by the Office is the failure to adequately present a n SNQ.
The proposal of one or more rejections of a claim is not sufficient to establish an SNQ. A statement that the references were not in the prior prosecution of the patent is also not sufficient. To adequately establish an SNQ, the request must demonstrate that a patent or printed publication that is relied on for the SNQ presents a new, non-cumulative technological teaching that was not previously considered and discussed on the record during prosecution of the application that resulted in the patent for which reexamination is requested. That is, the request must clearly point out and explain how each asserted SNQ is substantially different from the previous examination of the patent before the Office.
2. Lumping Together Rejections in a Request
In a reexamination request, each proposed rejection presented in the request must be discussed individually. Third party requesters often fall into the trap of lumping similar rejections together, particularly where the rejections have overlapping discussions. The lumping of rejections is a common reason that reexamination requests are bounced by the Office. For example, a proposed rejection stating “claims 1-10 are anticipated by reference A or rendered obvious by A in view of B” or “claims 1-5 are rejected based on reference A, reference B, and/or reference C” is improper. Instead, each rejection must be separately stated and presented in the request.
3. Failure to Fully Develop Evidence of Patentability in Response to First Office Action
Many practitioners fail to recognize that prosecution of a reexamination proceeding has several fundamental differences from the prosecution of an application. One of these differences relates to the patent owners options after a final rejection. Currently, in prosecution of an application, an applicant may file one or more requests for continued examination (RCEs) to continue prosecution of the application after final. An equivalent to RCE practice is not provided for by the rules in reexamination proceedings. Without the ability to “restart” prosecution in a reexamination, the patent owner has a limited window during which to present evidence of patentability to the Office. Failure to present available evidence in support of patentability in response to the First Office Action may foreclose the entry of that evidence later in the proceeding. After the first Office Action, the Office requires the patent owner to provide sufficient grounds why the evidence sought to be entered could not have been entered earlier. If the patent owner cannot meet this standard, the evidence is precluded from the proceeding. Therefore, the patent owner must be looking forward to what evidence may be required for a potential appeal to the Board of Patent Appeals and Interferences or the Federal Circuit when responding to the first Office Action in a reexamination.
4. Taking for Granted a Request for an Extension of Time
Many practitioners incorrectly assume that an extension of time request in a reexamination is a mere formality, similar to the ease of which extensions are requested and granted during prosecution of an application. However, because of the statutory mandate of handling reexaminations with “special dispatch,” the Office views requests for extension of time critically. A request for extension of time must be requested prior to the date on which the action is due and must set forth sufficient reasons of the extension. The reasons must be details and describe what actions the patent owner has taken to provide a response to date as of the date the request for extension is submitted and why in spite of the action taken thus far, the requested additional time is needed. Many extension of time petitions are denied because the requester simply failed to provide enough detail to the Office to support the request.
5. Not Fully Utilizing 1.132 Declarations
Many critics argue that the cards are stacked against the Patent Owner in a reexamination proceeding. The strategic use of declarations under 35 U.S.C. § 1.132 (”1.132 Declarations”) in a reexamination can help tip the scales to a more balanced position for a Patent Owner. When responding to an Office Action, a practitioner has two arrows in her quiver – declarations and attorney arguments. From the perspective of the Office, an argument supported by well crafted 1.132 declaration, particularly from an expert, is more persuasive than the same argument presented merely by attorney argument. Despite the power of 1.132 declarations, they are infrequently used in prosecution of reexaminations.
6. Not Applying Listed Documents in a Rejection
Each reexamination request received by the Office is reviewed by a paralegal before being handed off to an examiner for the grant determination. The paralegals are trained to look for a set of specific items in each reexamination request. One such item is the use of references cited in the request disclosure form. Each reference cited in a reexamination request disclosure form must be identified as the basis of at least one substantial new question of patentability or as part of a proposed rejection based on the SNQ. Failure to use each cited reference as an SNQ or in a proposed rejection will result in the request for reexamination being bounced by the Office.
7. Failing to Provide a Summary of Interview in Ex Parte Reexamination
In ex parte reexaminations, interviews between a patent owner and the examiner are permitted after the issuance of the first official action in a reexamination proceeding. Rule 1.560(b) requires that the patent owner provide a complete written statement of the reasons presented at the interview as warranting favorable action. This statement must be filed as a separate part of an outstanding Office Action or as a separate paper within one month from the date of the interview, whichever is later. Failure to provide this written summary of the interview will result in the abandonment of the reexamination, even if a complete response to the Office Action is provided. The Office has abandoned several ex parte reexaminations under these circumstances.