AIA Rules: Citation of Prior Art and Estoppel in Reexamination

President Obama speaking at the AIA signing ceremony, September 16, 2011.

In two days we will celebrate the first anniversary of the signing of the America Invents Act (AIA). Over the next week to two weeks I will be focusing on the AIA, both in retrospect and insofar as practice and procedure is concerned at the USPTO.  Yesterday I wrote about Supplemental Examination.  Today we take a look a the Final Rules packaged titled Changes To Implement Miscellaneous Post Patent Provisions of the Leahy- Smith America Invents Act, which were published in the Federal Register on August 6, 2012.

The “miscellaneous” final rules primarily implement two things.  First, section 6 of the AIA to provides for an estoppel that may attach to the filing of an ex parte reexamination request subsequent to a final written decision in a post grant review or inter partes review proceeding. See 37 CFR 1.510(b)(6).  Second, the final rules expand the scope of information that a person may cite in the file of a patent to include written statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent.

With respect to the first, relating to ex parte reexamination, USPTO rules will now require that a third party request for ex parte reexamination contain a certification by the third party requester that the statutory estoppel provisions apply to completed inter partes reviews and post grant reviews do not bar the third party from requesting ex parte reexamination. Cosmetically, the final rules also implement Section 3(i) of the AIA, which replaces interference proceedings with derivation proceedings, and replaces the title ‘‘Board of Patent Appeals and Interferences’’ with ‘‘Patent Trial and Appeal Board.”

Patent Owner Claim Scope Statements

The most significant (which is relative) of these changes, and the change that the final rules spend the most time discussing, relates to the new rules on the citation of prior art in a patent file.  37 CFR 1.501 implements the amendment to 35 U.S.C. 301 by section 6(g)(1) of the AIA.  New 35 U.S.C. 301(a)(2) provides for any person to submit in the patent file written ‘‘statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.’’

Section 1.501(a) states:

At any time during the period of enforceability of a patent, any person may file a written submission with the Office under this section, which is directed to the following information:

(1) Prior art consisting of patents or printed publications which the person making the submission believes to have a bearing on the patentability of any claim of the patent; or

(2) Statements of the patent owner filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent. Any statement submitted under this paragraph must be accompanied by any other documents, pleadings, or evidence from the proceeding in which the statement was filed that address the written statement, and such statement and accompanying information under this paragraph must be submitted in redacted form to exclude information subject to an applicable protective order.

Submissions may be made anonymously, and there is no obligation or duty to supplement filings with additional information that may become available.  If the party making the submission wishes his or her identity to be kept confidential the submission papers must be submitted anonymously without any identification of the person making the submission. See Section 1.501(d).

After publication of the proposed rules there were a number of comments submitted by the public. Based on these comments the USPTO expanded the scope of what can be submitted in the final rules.  Specifically, the final rule does not prohibit the submission of written statements ‘‘made outside of a Federal court or Office proceeding and later filed for inclusion in a Federal court or Office proceeding.’’

Furthermore, several comments questioned whether a patent owner claim scope statement is limited to statements made about a specific patent or whether it extends to statements made about claims in related patents and patent applications.  To this inquiry the USPTO explained that it is their interpretation that a patent owner statement must be directed to the claims of a particular patent to be eligible for entry into the file.

Content of Filings

As can be seen from the text of Section 1.501(a)(2), a submission may specifically include prior art and written patent owner claim scope statements. The term ‘‘Federal court’’ is interpreted by the USPTO to included the United States Court of International Trade, which is a Federal court, but does not include the International Trade Commission, which is a Federal agency and not a Federal court.  Although this interpretation is completely consistent with 35 U.S.C. 301(a)(2), the exclusion of ITC statements seems to be a gapping hole given the ever increasing importance of the ITC as a parallel path for patentees.  The legislative history explains that the purpose of allowing the submission of statements made by a patent owner is intended to limit the ability to put forward different positions with respect to the prior art in different proceedings on the same patent.  Therefore, Congresses choice (if it can be called that) to preclude filings of statements made at the ITC seems to clearly defeat the intention of the legislation.

In order for one to file a statement of the patent owner in Federal court the submissions must: (1) Identify the forum and proceeding in which patent owner filed each statement, and the specific papers and portions of the papers submitted that contain the statements; and (2) explain how each statement is a statement in which patent owner took a position on the scope of any claim in the patent. See Section 1.501(a)(3).  The required explanation must include discussion of the pertinence and manner of applying any prior art submitted to at least one claim of the patent. See Section 1.501(a)(b)(1).  The explanation may also include discussion of how the claims differ from any prior art submitted or any written statements and accompanying information submitted under paragraph.

Essentially, the USPTO is looking for the party submitting the patent owner claim scope statement to provide enough accompanying information to provide context for the statement, which will allow the Office can properly weigh its probative value in construing the proper meaning of a claim.


§ 1.501(e) provides that a person other than the patent owner making a submission pursuant to § 1.501(a) must include a certification that a copy of a submission under § 1.501 has been served in its entirety upon the patent owner at the address as provided for in § 1.33(c).  This rule differs from the proposed rule because some commenters suggested that a patent owner who filed ought not to have to serve themselves.  The USPTO seemed to agree, or at least throw up their hands and say “ok.”

For the life of me I can’t ever see a patent owner filing a statement on the scope of their own claims. Perhaps a patent owner may file such a statement given that there is no mechanism under the rules for the patent owner to challenge a statement believed to be erroneous, for example.  In so doing, the patent owner can include a written explanation of how the claims of the patent differ from the prior art or any patent owner claim scope statement and accompanying information submitted by the third party. Still, I don’t see that happening much, if ever.

Section 1.248(a) governs the manner of service and provides different ways to achieve service, including publication in the Official Gazette if service is otherwise unsuccessful. See § 1.248(a)(5).

Reexamination Peculiarities

The submission of statements by the patent owner, as useful as it may be in the right scenario, will not be a substitute for filing a request for reexamination. Similarly, statements of the patent owner cannot be used as a rationale to support the finding of a substantial new question of patentability to provoke a reexamination.

Pursuant to Section 1.515(a), a submitted statement and any accompanying information submitted pursuant to Section 1.501(a)(2) will not be considered by the patent examiner when making a determination on any request for reexamination. While perhaps somewhat counterintuitive, this interpretation is clearly in keeping with the text of AIA.  35 U.S.C. 301(d) states in relevant part, ‘‘A written statement… shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324.’’ Thus, the AIA prohibits the use of the statement for any purpose other than determining the claim scope in a proceeding that has already been ordered or instituted.  It may not be considered when determining whether to order or institute the proceeding.

Notwithstanding, any statement of the patent owner and any accompanying information that is a part of the record in a patent being reexamined may be considered by the patent examiner to determine the proper meaning of a patent claim when applying patents or printed publications after a reexamination proceeding has been commenced.

Citation of prior art can be made in reexamination proceedings, including the filing of statements by the patent owner in Federal court.  However, if the person citing the prior art is not either the patent owner or the third party requester the citation of prior art will not be entered into the file until the completion of the reexamination proceeding.  See Section 1.501(c) and 1.502.


How often this will be used remains to be seen.  Given that statements made at the ITC cannot be filed at the USPTO is seems as if it would be a rare instance where there would be contradictory statements by patentees, thus striking at the heart of the rationale for allowing such statements.


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