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Challenging Patents – Short of Litigation

Posted in Patent Law

By Pamela Winston Bertani

Suppose your client discovers that a patent application pending before the United States Patent and Trademark Office discloses information or includes claims that infringe your client’s existing United States patent – and your client wants to know what can be done to challenge the pending application without actually filing a patent infringement suit. Your answer should be that there are several options for challenging a patent or patent application before the Patent and Trademark Office, instead of in court. This article briefly reviews the alternatives your client should be aware of.

One option that your client – the patent owner – may consider to challenge a pending patent application is an interference proceeding before the Board of Patent Appeals. Whenever a patent application is pending which, in the opinion of the PTO, would interfere with another application or an issued patent, an interference may be declared. However, a key question here is who can initiate an interference proceeding. The rules state that only an Examiner, on his own initiative, or a patent applicant (with an application pending before the PTO) can actually initiate interference proceedings. Thus, a patent owner (your client) cannot initiate an interference unless he becomes an applicant by filing a reissue application for his existing patent. Reissue applications are primarily filed to correct an error in an issued patent, which was made without any deceptive intention, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. There must be at least one error in the patent to provide grounds for a reissue of the patent, and if an error does not exist, then pursuing a reissue application is inappropriate. Moreover, reissue applications are subject to a full examination, and are subject to the same rules as are initially filed applications. Your client may be reluctant to subject an issued patent to the reissue process, in fear of possibly losing already acquired rights.

However, pursuant to 37 CFR 1.99 and 37 CFR 1.291, a patent owner may alert an examiner to the existence of interfering claims in a pending application. In other words, while your client may not actually initiate interference proceedings, he is entitled to call the Examiner’s attention to claims in a pending application that interfere with your client’s issued patent. Under such circumstances, your client would notify the Examiner of the interfering application by filing a 37 CFR 1.99 submission. Importantly, the submission must be filed within two months of the application’s publication date (under 37 CFR 1.211, patent applications are published in the Official Gazette eighteen months after the filing date, unless the applicant files a non-publication request). The 37 CFR 1.99 submission must also identify the application to which is directed, and must not include any explanation of your client’s patent, or any other publications being submitted to challenge the pending application. Missing the two month post-publication window for filing a submission could destroy this opportunity for your client to file a submission, and correspondingly encourage the Examiner to initiate an interference proceeding.

Another option that your client may consider to challenge a pending patent application is initiating a protest proceeding against the pending application. A protest may be filed by any member of the public against a pending application, and it will be matched with the application file if it adequately identifies the patent application. Unlike the 37 CFR 1.99 interference submission, a protester is entitled to submit a written explanation describing the relevance of all patents, publications or other information that forms the basis of the protest against a pending application – a significant advantage to your client. However, a significant procedural hurdle to overcome in filing a protest is that pursuant to 37 CFR 1.291, the protest must be filed before the application to be challenged is published in the Official Gazette (or where applications are not published, before a Notice of Allowance for the pending application is mailed). The obstacle here is formidable – unless your client somehow knows or is made aware of the pending application by means other than publication (i.e., for instance by someone who has knowledge of the pending application), then it will be difficult, if not impossible, to satisfy the 37 CFR 1.291 pre-publication/allowance deadline for timely filing a protest.

A third challenge option that your client may consider is initiating reexamination proceedings. Strategically, this option differs considerably from those discussed above, particularly because reexamination proceedings can only be initiated against issued patents. In other words, the pending application must be allowed to issue as a patent before reexamination proceedings are a viable option. Under the reexamination rules, at anytime during a patent’s enforceability period any person may cite, to the PTO in writing, prior art consisting of patents or printed publications, which that person states to be pertinent to the challenged patent, and believes to have a bearing on the claimed invention’s patentability (i.e., raising a new question of patentability).

The reexamination statute was significantly amended in 1999 and again in 2002 to expand what was considered by many to be a fairly restrictive and procedurally narrow reexamination process. Most notably, the initially established ex parte reexamination rules, which remain in place, do not permit third parties to contest an issued patent’s validity in the context of an adversarial PTO proceeding. Challengers are not permitted to question, rebut, or even receive communications between the challenged patent owner and the reexamination Examiner after the proceeding is commenced. However, the amended inter parties reexamination rules now provide third party challengers with a greater opportunity to participate – in an adversarial manner – during reexamination proceedings by submitting responsive pleadings, and, unlike the former ex parte rules, provide third party challengers with appeal rights (i.e., to appeal Examiner decisions to the Board of Patent Appeals and Interferences, and to participate in a patent owner’s appeal to the Board). Moreover, third party challengers also have Federal Circuit appeal rights, and the right to participate in a patent owner’s appeal to the Federal Circuit. Conversely, before 2002, third party challengers did not have appeal rights to the Federal Circuit, and correspondingly did not have the right to participate in a patent owner’s Federal Circuit appeal. Importantly, your client must be aware that exercising the inter parties reexamination option requires third party challengers to accept a statutory estoppel against subsequent review, either by the PTO or Federal Circuit, of issues that were or could have been raised in the reexamination proceeding. These limits are ostensibly aimed at preventing the use of inter parties reexamination as a means for harassing patent owners.

Considering these options as an alternative to patent litigation may in various circumstances bode well for some clients. This may particularly be the case where clients are financially or strategically averse to protracted litigation and outcome uncertainty – with the Federal Circuit frequently reversing claim construction issues presented on appeal. While PTO proceedings are not without risk, such alternatives may provide clients with a faster and cheaper way to resolve patent disputes, short of full-fledged civil litigation.

Pamela W. Bertani is an associate in Weintraub Genshlea Chediak Tobin & Tobin’s Intellectual Property group. Her practice includes providing advice in obtaining various forms of intellectual property protection, including patent, trademark, and copyright protection. Ms. Bertani is a member of the United States Patent Bar, and her practice also includes both patent litigation and prosecution