Patent Owner Requesting Reexamination may not Appeal to the Board the Examiner’s Grant of Reexamination

Scott Daniels | February 23, 2011

The PTO Board’s second decision yesterday in Ex Parte Yasukochi – involving a patentee-requested reexamination of U.S. Patent No. 7,034,083 for an adhesive for a transdermal patch – instructs practitioners on how to challenge an examiner’s decision that a substantial new question of patentability (SNQ) is presented.  

Last June, the Board issued its first decision in the Ex parte Yasukochi, concluding, inter alia, that may a patentee may challenge an examiner’s determination that a substantial new question of patentability has been presented, and the consequent grant of reexamination, by petition to the Commissioner, but not by appeal to the Board.  Shortly after the first Yasukochi decision, the PTO Director issued a notice (75 Fed. Reg. 36,357 (June 25, 2010)) delegating authority to the Chief Administrative Law Judge “to review issues related to the examiner’s determination that a reference raises [an] SNQ.”  The Board subsequently withdrew its first Yasukochi decision and ordered new briefing on whether the Director’s Order affected that decision.

The Board’s second Yasukochi decision yesterday reached essentially the same conclusion as its first: the Director’s notice provides for a challenge to an examiner’s determination of an SNQ.  Here, the patentee challenges a particular rejection, not the original determination of an SNQ.  The Board explained that “the Notice does not delegate authority to the Board to decide whether a particular initiated reexamination is outside the scope permitted in an ex parte reexamination.”  It is only the threshold determination of an SNQ that the Director’s Notice permits to be appealed to the Board. 

There was also an implication in the phrasing of the Board’s opinion that it was uncomfortable with the patentee, who had requested reexamination, later challenging the grant of reexamination, as if a patentee’s request for reexamination entails an estoppel against appealing the grant of reexamination.

Finally, the Board explained more broadly that issues “relating to process or procedure are reviewed by petition,” whereas “issues relating to the substantive merits of patentability are reviewed by appeal to the Board.”  In “ex parte reexamination, patent owners may only appeal ‘any decision adverse to the patentability of any original or proposed amended or new claim of the patent’ and ‘the final rejection of any claim,’” citing 35 U.S.C. §§ 306 & 134(b) (emphasis in original).  But supervisory power over the examiners remains with the Director.

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