Misa Bretschneider | October 3, 2012
First, ex parte reexamination. Interviews between a patent owner and the examiner on the merits of the proceeding are permitted. After an interview, a patent owner must provide an interview summary as required by 37 CFR 1.560(b). Under that provision, a patent owner must complete and separately file a written statement on the substance of the interview (and not simply an interview agenda). This statement must be filed within one month from the date of the interview.
Failing to file a timely statement will result in a termination of the reexamination (37 CFR 1.550(d)) (see Star Scientific, 90/009,372 & 90/009,375). A patent owner can file a petition to revive the reexamination proceedings for unavoidable or unintentional delay, but this is not optimal because such petitions are sometimes denied and the petitioner might again fail to comply with the procedural requirements of the petition for revival.
What about inter partes reexamination? Interviews are not permitted in inter partes proceeding (37 CFR 1.955). Even so, a patent owner can file a petition under 37 CFR 1.183 to waive or suspend 37 CFR 1.955 to permit an interview in the reexamination. Most often, a patent owner files the petition after a requester has withdrawn from the inter partes proceeding (typically when the parties have settled in a parallel litigation). When a requester has not officially withdrawn from the proceedings, it appears that the petition is rarely granted due to concerns over the substantive rights of the requester.
When a requester officially withdraws from a reexamination, a patent owner is likely to get an interview if it follows the Office’s instructions to “set forth with specificity” the facts giving rise to an “extraordinary situation” in which justice requires suspension of the rule. It appears patent owners too often fail to specifically points to facts that would warrant an interview.
So, how does a patent owner file a successful petition for an interview? First, pay the $400 fee to suspend the rules, as required by 37 CFR 1.17(f).
Second, determine whether the requestor has officially withdrawn from the proceedings. If the requestor has already withdrawn, the patentee must provide a formal document that proves the requestor has stated on the record that it will no longer participate in the proceeding. An e-mail, press release, a statement attesting to the requestor’s limited role in the proceedings, or other unauthorized documents will not be sufficient. In some proceedings, the requestor supports the petition and the Office favorably views this information.
If the requestor has not withdrawn from the proceedings, the interview will only be granted for “extraordinary circumstances, when justice requires.” The Office has broad discretion to determine whether the petition presents a sufficiently extraordinary situation. We are aware of only one situation where the situation was found to be “extraordinary”: when a computer program at the center of the reexamination only could be accessed and demonstrated through use of the patent owner’s standalone equipment. Accordingly, the Office granted a single interview “strictly limited” to a demonstration of the CD’s contents.
Third, point to specific issues that need to be discussed in the interview. The petition cannot be a generic statement with an incomplete list of broad issues or minimal fact citation. For instance, citing two secondary considerations in a footnote will not suffice. Rather, a complete list of sufficiently focused issues must be clearly enumerated. What is considered a complete list: a submission of specific declarations, specific technical features, specific rejections, specific claim language, or specific prior art for discussion. “Specific” is the golden word, as successful petitions repeatedly used the term before every enumerated reason.
Fourth, include the wording of 35 USC 314(c) (“special dispatch”). Successful petitions assert that an interview would support the rationale behind 37 CFR 1.955 in promoting special dispatch by assisting the Office in expeditiously resolving the proceeding.
Interviews are supposedly “strictly limited” to the petition’s substance, and a reexamination supervisor will oversee the interview to ensure compliance. To be safe, a patent owner should fully list the issues that it wants to discuss in the interview.
- As with ex parte proceedings, the patent owner must separately file an interview summary within one month from the interview date.
- Any subsequent petitions for an interview carry a higher burden of persuasion. The petitioner must show a “further strong showing of necessity” and explain why the basis for the requested interview could not have been addressed in the first interview. Each subsequent request must be filed separately and include the $400 fee required by 37 CFR 1.17(f).
- If a petition for an interview is denied, a renewed petition can be filed without an additional fee.
- Third party requestors cannot petition to participate or attend an interview (MPEP 2281).
- The patent owner cannot petition for an interview until after the first official Office action (MPEP 2281).