1. PTO’s Proposals Regarding Amendments Permitted During Reexamination (A6/A7) Nancy J. Linck, Esq. Rothwell, Figg, Ernst & Manbeck nlinck@rfem.com June 1, 2011

2. 2 Proposed Timing of Amendments (A6) Limited to the earlier of (1) Patent Owner’s optional statement; or (2) Patent Owner’s response to FOAM

3. 3 Significant Challenge: The Statute “[R]eexamination will be conducted according to the procedures established for initial examination.... In any reexamination proceeding..., the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto in order to distinguish the invention from the prior art..., or in response to a decision adverse to the patentability of a claim of a patent.” 35 U.S.C. §§ 305 (EPR) & 314 (IPR)

4. 4 Other Challenges with Timing Proposal Issues are not yet crystallized because of the PTO’s handling of the SNQ order and FOAM. Thus, Patent Owners must submit extensive new claims to protect themselves from as-yet undefined positions the PTO may take. Permitting later amendments (and addition of new claims) would decrease the number of amendments and new claims significantly.

5. 5 Amendments Prior to FOAM Even less supportable would be requiring the patent owner to submit all its amendments and new claims prior to a FOAM. No support in the statutory scheme – in fact, the procedure would be contrary to statute – in that it requires reexamination to be “conducted according to the procedures established for initial examination.”

6. 6 Alternative Approach PTO should require examiners to do an independent evaluation of the request (read the references and independently determine whether all proposed SNQs are viable). Fewer requests would be granted and fewer SNQs would be adopted, thereby focusing the issues to be addressed. Fewer claim amendments and fewer new claims would be needed. The result would be fairer and may ultimately be faster.

7. 7 Proposed Limitation on Entry of Claim Amendments (A7) “Claim amendments will not be entered unless accompanied by a statement explaining how the proposed new claim language renders the claims patentable in light of an SNQ” Suggested support: In re Freeman, 30 F.3d 1459 (Fed. Cir. 1994)

8. 8 Significant Challenge (again): The Statute “[R]eexamination will be conducted according to the procedures established for initial examination.... In any reexamination proceeding..., the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto in order to distinguish the invention from the prior art..., or in response to a decision adverse to the patentability of a claim of a patent.” 35 U.S.C. §§ 305 (EPR) & 314 (IPR).

9. 9 In re Freeman First: The statute controls. Second: Freeman just doesn’t support the proposal (it’s dicta taken out of context). Only two holdings in Freeman: – Cannot obtain broadened claims in reexam (by statute) – Issue preclusion prevented the patentee from arguing a different claim construction than that given by the district court.

10. 10 The Fairness Aspect Reexam must not only be fast and efficient – it must be fair. The patent is in reexam because the PTO failed to do its job initially; that failure deprived the patent holder the opportunity to obtain a valid patent during initial examination, including through amendment and addition of new claims. Further, in most reexams, the patent holder has invested substantial funds based on the assumption the PTO did its job in the first instance. How can it be fair to now limit a patentee’s opportunity to amend the claims and add new claims, as he or she could have done during initial examination?

11. 11 Alternative Approach Again, PTO should critically assess the strength of the request before ordering reexam – not just adopt the requestor’s SNQs. Since a determination of no SNQ is not appealable, eliminating SNQs (including duplicative SNQs up front) will cut the PTO’s reexam workload. Limit the number of pages per request to make the PTO’s task manageable in a reasonable time. Conduct reexam just as initial exam to satisfy the statute. Don’t make speed that be-all and end-all goal. Fairness must also be considered.

12. 12 Wrap-up Remark The PTO has a huge challenge with reexamination, particularly IPR. The statutory scheme, if fairly administered, cannot provide a fast and efficient alternative to district court litigation. My dream of such an alternative cannot be fulfilled. Thank you for trying. Please prove me wrong.