Ex Parte Reexamination 筆記

筆記

當AIA實施後，專利公告後的異議制度有幾個重要變化，包括加入快速獲得結論且與訴訟可密切相關的IPR/PGR/CBM，以及提供給專利權人在提告前確認專利權的Supplemental Examination，IPR取代了原本inter partes reexamination，但保留了單方再審查程序（ex parte Reexamination）。可參考過去報導：http://enpan.blogspot.tw/2014/03/blog-post_26.html。

AIA實施後也漲了Ex Parte Reexamination費用：
一般實體：$12000
小實體：$6000
微實體：$3000
（另可能有超項費用、專利權人自己提出的再審查補充審查（supplemental examination）費用）

這個始於1981年的單方再審查程序（ex parte Reexamination，有人稱"EPR"）規定在35 U.S.C. 302，任何人（包括專利權人自己，非匿名，但不必是利害關係人）在任何時刻可以在USPTO對特定專利的特定申請專利範圍提出再審查請求，其中需要依據先前技術提出再審查理由（35 U.S.C. 301）。EPR有別於IPR，EPR無須利害關係人皆可提出，但是時間比較冗長，相對程序簡單。

提出單方再審查程序時，應提出對特定申請專利範圍有關的新的專利性（patentability）議題，提出再審查理由後，USPTO應於三個月內回應是否受理，受理後，會給專利權人兩個月的時間回覆，專利權人可以回覆意見，包括修正專利範圍（不得擴大專利範圍，35 U.S.C. 305），或是新增專利範圍，這些資訊也會傳送到提出方，也會給予提出方另外兩個月的回覆期限（35 U.S.C. 304），之後進入審查，過程不會公開給第三人，審查結果會作出「reexamination certificate」（35 U.S.C. 307），有時會記載在公告本末頁。

程序規範見於MPEP 2209。

專利權人可對於再審查決定提出上訴（35 U.S.C. 306），於PTAB提出訴願（35 U.S.C. 134），並可繼續上訴到法院（35 U.S.C. 141）。

[法條]
35 U.S.C. 302   Request for reexamination.
Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301 . The request must be in writing and must be accompanied by payment of a reexamination fee established by the Director pursuant to the provisions of section 41 . The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. Unless the requesting person is the owner of the patent, the Director promptly will send a copy of the request to the owner of record of the patent.

35 U.S.C. 304   Reexamination order by Director.
If, in a determination made under the provisions of sub section 303(a) , the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. The patent owner will be given a reasonable period, not less than two months from the date a copy of the determination is given or mailed to him, within which he may file a statement on such question, including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination. If the patent owner files such a statement, he promptly will serve a copy of it on the person who has requested reexamination under the provisions of section 302 . Within a period of two months from the date of service, that person may file and have considered in the reexamination a reply to any statement filed by the patent owner. That person promptly will serve on the patent owner a copy of any reply filed.

35 U.S.C. 305    Conduct of Reexamination Proceedings.
After the times for filing the statement and reply provided for by section 304 have expired, reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any reexamination proceeding under this chapter, 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 as claimed from the prior art cited under the provisions of section 301, or in response to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter. All reexamination proceedings under this section, including any appeal to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office.

35 U.S.C. 306    Appeal.
The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134, and may seek court review under the provisions of sections 141 to 144, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.

35 U.S.C. 307    Certificate of Patentability, Unpatentability, and Claim Cancellation.
(a) In a reexamination proceeding under this chapter, when the time for appeal has expired or any appeal proceeding has terminated, the Director will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.
(b) Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.

35 U.S.C. 134   Appeal To The Patent Trial And Appeal Board.

(a) PATENT APPLICANT.— An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.

(b) PATENT OWNER.— A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.

MPEP 2209 Ex Parte Reexamination

...

The basic characteristics of ex parte reexamination are as follows:

(A) Anyone can request reexamination at any time during the period of enforceability of the patent;

(B) In ex parte reexaminations ordered under 35 U.S.C. 304, prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103.Patents may also be applied in a double patenting rejection as discussed in MPEP § 2258 subsection I.D. (However, in ex parte reexaminations ordered under 35 U.S.C. 257, the prior art considered during reexamination is not limited. See MPEP § 2801);

(C) A substantial new question of patentability must be present for reexamination to be ordered;

(D) If ordered, the actual reexamination proceeding is ex parte in nature;

(E) Decision on a request for reexamination submitted under 35 U.S.C. 302 must be made no later than 3 months from its filing, and the remainder of the proceeding must proceed with “special dispatch” within the Office. (Similarly, a decision on a request for supplemental examination submitted under 35 U.S.C. 257 must be made no later than 3 months from its filing (see MPEP § 2815), and any ex parte reexamination proceeding ordered as a result of a supplemental examination proceeding must proceed with “special dispatch” within the Office);

(F) If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of a reexamination certificate;

(G) The scope of a claim cannot be enlarged by amendment;

(H) All reexamination and patent files are open to the public, but see paragraph (I) below;

(I) The reexamination file is scanned into IFW to provide an electronic format copy of the file. All public access to and copying of the reexamination file may be made from the electronic format copy available through PAIR. Any remaining paper files are not available to the public. Images of non-patent literature (NPL) cited in public files are not available for either viewing or downloading through Public PAIR. Certified copies of the full contents of the files, including NPL, are available from the Office of Public Records, and may be ordered online at www.uspto.gov.

Ron