How Petitions Affect Dismissed Petition Reconsideration, Reopening and Clarification of Prosecution | Sterne, Kessler, Goldstein and Fox PLLC

takeaway:

• Denied petitions are common and preventable.
• Filing a petition through Reconsideration or Reissuance adds delay to the “special shipment.”

This month we will take a deeper look at petition practice for cases handled by the Central Reconsideration Unit (CRU). As stated in our article previous articleSometimes first impression problems arise in situations prior to the CRU where there is little or no guidance for the CRU reviewer to follow. And sometimes situations arise where one party strongly believes that the examiner’s procedural action or requirement was simply wrong. Such situations require the filing of a petition for relief, and the Office offers a variety of petition options. Understanding petition practice and choosing the best petition tool for the situation are the first hurdles to getting petition relief.

The office generally makes three types of petition decisions: Granted, Denied, and Dismissed. The first two types are straightforward and the petition decision explains the actions/options to be taken or why the requested actions/options will not be taken, depending on the type of decision. Denied petitions may or may not present additional petition opportunities, depending on the situation and the deciding official.

Denied petition decisions are more common and more confusing. Dismissal of a petition usually means that the petition is deficient or incomplete in one or more respects, or that the petition was filed under the wrong rule. It is common for denied petitions to state only one reason for dismissal and invite the petitioner to request reconsideration. However, the Office rarely discloses all possible reasons for dismissal in the initial decision. This could lead to serial reconsideration requests and dismissals, which would frustrate both the patent owner and the CRU’s “special referral” authority. Communicating with Office staff in cases where the speed of prosecution is important for the patent owner, for exampleA reconsideration and reissuance hotline prior to petition filing to discuss the appropriate rule for petition submission, as well as the type of evidence or argument the Office may require for an acceptable petition, can lead to timely petition results. Additionally, once a decision to terminate is made, it would be prudent for the petitioner to contact the decision-making official directly before requesting any reconsideration. The petitioner should specifically investigate the type of facts, evidence, or arguments that result in a persuasive petition to ensure that a complete request for reconsideration is submitted.

It is also important to note that almost all petition submissions in a reexamination process or reissuance application remove the file from the reviewer’s existing caseload file. Different types of petitions are decided by different decision-making officials within the Office. Petitions for reexamination and reissuance are often decided by the CRU Director’s designee or staff assigned to the Office of Patent Legal Administration (OPLA). These decision-making officers balance their petition workload with their remaining duties and generally decide on petitions in the order they are received unless the petition is indicated to be time critical. Filing a petition may extend the overall pendency of the trial from several months to a year.

In some cases, especially in reexamination, avoiding this delay or delay may be desirable as a strategic advantage. For example, if there is a race on invalidity issues in the Federal Circuit, it is desirable to avoid delay. Fresenius USA, Inc. – Baxter Intern., Inc.721 F.3d 1330 (Fed. Cir. 2013). As another example, a delay may be sought if a revenue-generating licensed patent claim is rejected on the grounds that it is not patentable under reexamination requested by a third party. Every month that the patent claim remains in effect is valuable to the patent owner.

A skilled practitioner will understand these unique situations and the importance of proper consideration of each office action for petitionable matters. Ideally, the skilled practitioner should understand the nuances between petitionable issues and objectionable issues in order to alert the client to all of his or her options. And the skilled practitioner must always create a consistent and clear record of the objection to each issue to preserve the issues that will be key to the success of future court proceedings.