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AIPLA PRESENTATION FOR USPTO PUBLIC HEARING ON REEXAMINATION q. Todd Dickinson

AIPLA PRESENTATION FOR USPTO PUBLIC HEARING ON REEXAMINATION q. Todd Dickinson AIPLA Executive Director June 1, 2011. AIPLA COMMENTS ON A4/C1. A.4: (For Ex Parte Reexamination ) (Examiner May Select One or More Representative Rejections From Among a Group of Adopted Rejections)

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AIPLA PRESENTATION FOR USPTO PUBLIC HEARING ON REEXAMINATION q. Todd Dickinson

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  1. AIPLA PRESENTATION FOR USPTO PUBLIC HEARING ON REEXAMINATION q. Todd Dickinson AIPLA Executive Director June 1, 2011

  2. AIPLA COMMENTS ON A4/C1 • A.4: (For Ex Parte Reexamination) • (Examiner May Select One or More Representative Rejections From Among a Group of Adopted Rejections) • C.1: (For Inter Partes Reexamination) • (Third Party Requester May Dispute the Examiner’s Designation That a Rejection is “Representative” of Other Rejections in the Group

  3. AIPLA COMMENTS ON A4/C1 • 35 U.S.C. §§ 304 and 313 each require that when theUSPTO Director has determined that an SNQ exists, that determination “will include an order ... for resolution of the question” (Emphasis added) • Accordingly, it is quite clear that if multiple SNQs are presented, and agreed with, then the rejections based on each of them must be “resolved”

  4. AIPLA COMMENTS ON A4/C1 • The reexamination statute places no limit on the number of prior patents and printed publications that may be cited to support a request for reexamination • With respect to the threshold jurisdictional requirement that a substantial new question of patentability (“SNQ”) be provided pursuant 35U.S.C. §§ 303(a) (ex parte reexamination) and 312(a) (inter partes reexamination), the statute places no limit on the number of prior art references or SNQs that may be presented in a request for reexamination

  5. AIPLA COMMENTS ON A4/C1 • MPEP § 2660(III) (inter partes reexamination) includes this provision: • “It is to be noted that the examiner is not to refuse to adopt a rejection properly proposed by the requester as being cumulative to other rejections applied. Rather, any such proposed rejection must be adopted to preserve parties’ appeal rights as to such proposed rejections”

  6. AIPLA COMMENTS ON A4/C1 • It should be rare that USPTO finds rejections based on two prior art references relied on to establish two SNQs for the same claim or claims to be cumulative. (MPEP § 2258.01) • Once those proposed SNQs are accepted, rejections based on those SNQs must be resolved pursuant to the statute • USPTO lacks the authority to do otherwise

  7. AIPLA COMMENTS ON A4/C1 • The proposed Rule Changes are not efficient • Ex Parte • If a “representative rejection” is overcome, the examiner “must” review every rejection that was not applied. • The patent owner must be given the opportunity to respond to those rejections • PROSECUTION MUST START ANEW Inter Partes • Creates new Issues for Appeal • Patent Owner has the fundamental right to be able to respond to new rejections • PROSECUTION MUST START ANEW

  8. Thank you!

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