1. Overview of Post-Grant Patent Practice Kevin Laurence of Stoel Rives LLPandMatt Phillips of Renaissance IP Law GroupLLP Seminar forThe Chartered Institute of Patent Attorneys London, United Kingdom9 May 2012

2. 2 Agenda Tools for Challenging Patents Review Proceedings Post-grant review (PGR) Inter partes review (IPR) proceedings Interim (business method) proceedings Reexamination Tools for Correcting Patents Reissue Owner-initiated reexamination Supplemental examinationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 3. 3Current Post-Grant Tools3 Inter PartesReexamination Tools for Patent Challengers Ex Parteat the PTOReexamination Tools forReissuePatent Ownersto Correct Patents Certificate ofat the PTOCorrectionDisclaimerKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 4. 4 Post-Grant Tools after September 16, 20124Post-Grant ReviewTools for Inter Partes Review Patent Challengers at the PTO Ex ParteReexamination Supplemental ExaminationTools for Patent OwnersReissue at the PTO Certificate ofCorrectionDisclaimerKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 5. 5Overview of ToolsFOR Patent Challengers5 6. 6 Tools for Patent Challengers6 Until 9/16/12Prior Art -Other Bases - Novelty ( 102),Patentable Subject Matter ( 101),Obviousness ( 103), orUtility ( 101),Double Patenting Enablement ( 112),Written Description ( 112) PrintedPublication Application Filed On orAfter 11/29/99 Ex ParteInter Partes Litigation ReexamReexamKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 7. 7Tools for Patent ChallengersFrom 9/16/12 Until Sometime After 3/16/137Prior ArtOther Basis( 102, 103, or ( 101,112)x2 Pat.) PrintedPublicationOutside Charged withInitial 9-Mo.Infringement ofWindow Bus. Meth. Pat. BusinessEx ParteInter Partes Method PatentLitigationReexamReviewReviewKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 8. 8 Tools for Patent ChallengersSometime After 3/16/13 Until 9/16/208 Prior ArtOther Basis ( 102, 103, or ( 101,112) x2 Pat.) PrintedPublicationOutside InsideCharged withInitial 9-Mo. Initial 9-Mo.Infringement ofWindowWindow Bus. Meth. Pat. BusinessEx Parte Inter Partes Post-Grant Method PatentLitigationReexam ReviewReviewReviewKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 9. 9 Tools for Patent Challengers After 9/16/209 Prior ArtOther Basis ( 102, 103, or ( 101,112) x2 Pat.) PrintedPublication Outside Inside Initial 9-Mo. Initial 9-Mo. WindowWindow Ex ParteInter PartesPost-GrantLitigation ReexamReview ReviewKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 10. 10 EPO Oppositions & Post-Grant Review:Timing & AlertsOpposition Post-Grant Review 9-month window to initiateEPO provides the Register USPTO does not yet provide anAlert service (formerlyalert service.WebRegMT), whichprovides automatic Third parties provide notices suchupdates regardingas Minesofts Patenttracker alerts.changes to data containedin the European PatentRegister.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 11. 11EPO Oppositions & Post-Grant Review: Basis/Threshold/InitiationOppositionPost-Grant Review ProceedingAlmost any basis of challenge Almost any basis of challengeavailable (except lack of available (except best mode)clarity and unity)Straw men permitted No strawmen - real-party-in-interest must be identifiedAdmissibility of an oppositionMost show that it is more likelyis only considered on formalthan not that at least onegrounds challenged claim is unpatentableKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 12. 12EPO Oppositions & Post-Grant Review:Presumption & BurdenOpposition Post-Grant ReviewClaims are presumed to be validin litigation but not in PGROpponent has theEvidence must be proven merelyburden of proof but by a preponderance of evidenceit can be reversedinstead of the higher standardin certain limitedrequired in litigation, clear andcircumstances convincing evidence Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 13. 13EPO Oppositions & Post-Grant Review:Construction & Prosecution History Estoppel OppositionPost-Grant Review Likely given their broadest reasonable interpretation and not the narrow construction given during litigation in U.S. district courts Statements made Prosecution history estoppel during prosecutionstatements made during do not bind patentprosecution impact review proprietor during proceeding and litigation the oppositionKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 14. 14Response by Patent Owner toPetition for Post-Grant Review Before PGR is ordered, the patent owner hasan opportunity to file a response to the thirdpartys petition setting forth the reasons whya post-grant review should not be instituted. After such a response has been filed or afterthe response period has expired, the PTOwill then have three months to determinewhether to institute a post-grant reviewproceeding. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 15. 15EPO Oppositions & Post-Grant Review:ProceduresOppositionPost-Grant ReviewOpposition Division - 3 examiners Patent Trial & Appeal Board (PTAB) including one who granted patent3 administrative patent judges (APJs)Limited rights to make claim amendments (no broadening)Administrative proceedings such as oppositions and review proceedings provideless robust opportunities for discovery than litigation oral hearingsProceeding may continue despite settlementintervention after 9-month window,joinder permittedeven during appealAppeals are made to the Boards of Appeals are made to the Federal CircuitAppeal; no estoppel so patent canstill be revoked by national court Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 16. 16EPO Oppositions & Post-Grant Review:Concurrent/Related LitigationOppositionPost-Grant Reviewparallel national court proceedingsparallel litigation regardingregarding infringement infringement and patentability (when counterclaimed)No legal estoppelEstopped, with respect to a challenged claim, from raising any ground in court, inter partes review or ex parte reexamination that the petitioner raised or reasonably could have raisedClaim interpretation at EPO does Need for consistent characterizationsnot control infringement litigationat PTO and parallel litigationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 17. 17EPO Oppositions & Post-Grant Review: Duration and Costs OppositionPost-Grant Review2-4 years;5 months for preliminary proceeding andthen once PGR is ordered, it must beappeals typically require completed within 12 months unless good24-30 monthscause is shown for an additional 6 months;appeals typically take about a year at theFederal CircuitFiling fee = 745 Proposed minimum filing fee is $35,800After filing the notice ofAfter filing the petition to request a post-opposition, the costs for the grant review proceeding, the costs for thepatent proprietor and the patent owner or the petitioner may be opposer may be 5,000 - 100,000-400,000.40,000.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 18. 18 Review Costs Likely Close to InterferenceCosts18Source: AIPLA Report of the Economic Survey 2011 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 19. 19Kill, Wound, and Miss What Will be the Results of PGR and IPR? U.S. EPX U.S. IPX EPO OppnKillMissMiss Miss 26% KillKill 44%WoundWoundWound30% Kill = All claims cancelled Wound= Claims amended Miss = All claims confirmedKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 20. 20 Popularity 3rd Time Is the CharmEPX in 80; EPX, IPX in 99; EPX, IPR and PGR in 11 5% opposed/year?%reviewed/year 0.5% reexamined/year Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 21. Cooperation between Litigators and Review/Reexamination Counsel21vs.Reexam/Review Litigators Counsel Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 22. 22 Comparison of the Availability ofReview Proceedings contdPost-Grant Review Inter Partes Review Available during a first Available during a secondwindow, within ninewindow, nine months aftermonths after grant ofissuance and any PGRsoriginal or broadening have terminatedreissue patent Available on September 16, Post-grant review statutes 2012go into effect on 9/16/12 Unlike with inter partesbut only patents governedreexam, there is no eligibilityby the first-inventor-to-filecutoff based on patentsprovisions are eligible forfiling datepost-grant review (some Number of IPRs may betime after 3/16/13)limited to 281 per year in each of the first 4 yearsKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 23. 23Comparison of the Availability of ReviewProceedings & Stays contdPost-Grant Review Inter Partes Review If sued for infringement, petitioner, real party in interest & privies have 1 year to seek inter partes reviewNot available if petitioner or real party in interest has filed declaratory judgmentactionSubsequent declaratory judgment action filed by petitioner or real party ininterest will be automatically stayed unless patent owner consentsNo stay of litigation pending PGR if1) Patent owner brings suitwithin 3 months of grant, and2) Patent owner moves forpreliminary injunctionKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 24. 24 Comparison of Review Initiation CriteriaProceedingCriteria to InitiateEx ParteSubstantial new question of patentabilityReexamination (SNQP)More likely than not (greater than 50% chance)Post-Grant Review that challenged claim is unpatentable (MLTN)or novel/unsettled important legal questionReasonable likelihood (50/50 chance) that thepetitioner would prevail (RLP), which is aInter Partes Review somewhat flexible standard that allows thejudge room for the exercise of judgment. 77Fed. Reg. 7041, 7046 (Feb. 10, 2012) Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 25. 25 Initiation Threshold contd No need to show that the patentability issues are new? Maybe not. See 35 U.S.C. 325(d): In determining whether to institute or order a proceeding under this chapter [32 post-grant review], chapter 30 [ex parte reexam], or chapter 31 [inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. Proposed rules say nothing about this. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 26. 26Bases/Grounds for Review Proceedings Post-Grant ReviewInter Partes Review [A]ny ground that could Only on a ground thatbe raised under [35could be raised underU.S.C. ] 282(b) [(2) or section 102 (novelty) or(3)] (relating to invalidity 103 (obviousness) andof the patent or any only on the basis of priorclaim) 35 U.S.C. art consisting of patents321(b).or printed publication. All grounds for35 U.S.C. 311(a).unpatentability except Double patenting?best modeKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 27. 27Other Differences between Post-Grant Review and Inter Partes Review While the estoppel implications are the same,the broader bases available for PGR meansthat IPR creates less estoppel issues Standard for additional discovery IPR: Interests of justice PGR: Good cause (lower showing)Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 28. 28Similarities between Post-Grant Review and Inter Partes Review Petition Requirements (70 pages for PGR and 50 pages for IPR) Patent Owners Preliminary Response Notice Patent Owners Response Motion to Amend Evidence and Exclusion of Evidence Hearing Settlement Final Written Decision Appeal Estoppel Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 29. 29 Procedure for Review Proceedings Patent Owner Response & PetitionDiscovery Mo. to Amend 2 mo.PreliminaryPetitioner Reply & ResponseDiscovery Opposition 3 mo. Patent Owner ReviewMotions Reply ?YESOral HearingNotice of Review 12 mo. Final Written(+ 6 mo.) Decision Appeal AppealInitial Conference ? Call Settlement Certificate AgreementKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 30. 30 Requirements for a PetitionRequesting PGR or IPR Mandatory notices Grounds for standing Availability of the patent for review Statement of non-estoppel Identification of challenge Each claim challenged Statutory ground for challenge How each challenged claim should be interpreted Why each challenged claim is unpatentable Relevance of supporting evidence for each challenge Supporting evidence as exhibits Fee; certificate of service; 50/70-page limitKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 31. 31Requirements for a Petition Requesting PGR or IPR - contd Mandatory notices Each real party-in-interest Related matters Lead and back-up counsel Service information Also due from patent owner within 21 daysafter service of the petition Duty to supplement Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 32. 32 Fees for PGR or IPR Proceedings Sliding scale based on number of claims challengedNo. claims challengedFee for PGR Fee for IPR1 20 $35,800 $27,20021 30$44,750 $34,00031 40$53,700 $40,80041 50$71,600 $54,40051 60$89,500 $68,000Each additional 10 $35,800 $27,200 Non-challenged base claims on which a challenged claimdepends count toward the claim count for feesKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 33. 33Page Limit and Petition to Waive Excluded parts: Table of contents Table of authorities Certificate of service Motion to waive the page limit Petitions must comply with the stated pagelimits But, an overlength petition can also be filedwith a motionKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 34. 34Preliminary Patent Owner Responseand Notice of ReviewPreliminaryReview NOPetition End Response?2 mo. 3 mo. YESNotice of ReviewKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 35. 35 Preliminary Patent Owner Response in PGR or IPR May argue why no review should be instituted Petition is barred References are not prior art The prior art lacks a material claim limitation The prior art teaches away for the proposed combination The petitioners claim interpretation is unreasonable Prohibited Amendments New testimonial evidence May expressly waive right to file preliminary response May disclaim claims to avoid review Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 36. 36 Notice of Review in PGR or IPR Sets the scope of the review Claims under review Grounds of challenge to be considered Will take into account patent owners preliminarystatement, if filed Notice of review will be published in OfficialGazette Notice will include a Scheduling Order Boards decision whether to institute a review is notappealable, but a party can request rehearingKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 37. 37 PGR or IPR Proceeding OwnerOwnerDiscoveryDiscovery Period PeriodPetitionerMotions toDiscoveryExclude Evidence PeriodKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 38. 38 Initial Conference Call About one month after Notice To discuss Scheduling Order Motions that parties plan to file Each side will submit a Motions List in advance Filing a motion not on the list will require prior authorization and likely will not change the schedule Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 39. 39Owners Initial Discovery Period Owner may take discovery once the proceedingis instituted Types of routine discovery Exhibits cited in papers Cross examination of declarants Inconsistent information Additional discovery Must request by motion Standard is interests of justice Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 40. 40 Owners Response Page limit is the same as the petition Can include evidence Should include all evidence owner intends torely on May be accompanied by a Motion to Amend As a separate paper See next slide Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 41. 41 Motion to Amend The patent owner may file 1 motion to amend thepatent in 1 or more of the following ways: Cancel any challenged patent claim For each challenged claim, propose a reasonablenumber of substitute claims One is presumed reasonable Additional motions to amend only upon Joint request to materially advance settlement Patent owners showing of good cause Pre-authorization by Board needed Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 42. 42Petitioners Reply & Opposition Petitioner can depose owners declarants Petitioners next filings 1) Reply to owners response 2) Opposition to Motion to Amend If petitioner files (2), then owner can file areply Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 43. 43Evidence Battles in PGR or IPR1) Objection Due during deposition or Due within 5 days of service of the evidence Due within 10 days after institution of review if evidence arose in preliminary proceeding2) Supplementation Supplemental evidence due within 10 days of objection3) Motion to Exclude4) Motion in Limine Federal Rules of Evidence applyKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 44. 44 Motion Practice All requests for relief must be by motion Movant has burden of proof Must get Boards advance authorization to filemotion Scheduling Order will pre-authorize many motions Any other opposed motion will require conference call with Judge to obtain authorization Notice of Motion per 37 C.F.R. 42.21 Statement of material facts Separately numbered sentences With citations to recordKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 45. 45 Motion Practice contd Non-moving party files Opposition Must identify disputed material facts Due one month after service of motion Moving party may file Reply May only respond to arguments raised in Opposition Due one month after service of opposition Page limits Motion: 15 pages Opposition: 15 pages Reply: 5 pagesKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 46. 46 Oral Hearing in PGR or IPREither party may requestScheduling Order will set deadline for requestGenerally, petitioner will go firstDemonstrative exhibits PTO advises against them If used, must serve 5 days in advance Generally, no live testimony No new evidenceKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 47. 47Final Written Decision in PGR or IPR Due within 12 months of institution of proceeding Time may be extended up to 6 months by the Chief Administrative Judge Rehearing of Final Written Decision Due 30 days from final decision Rehearing of individual judge decisions Due 15 days from decision Reviewed by panel for abuse of discretion PTO will publish Certificate after rehearing and appeal periods lapseKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 48. 48 Appeal in PGR or IPR Final Board decision may be appealed To the Federal Circuit By either (losing) party Both parties may participate in appeal Deadline to file Notice of Appeal is 63 days fromdate of final Board decision Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 49. 49Settlement in PGR or IPR To settle, parties must file written settlementagreement before final written decision Board may still make patentability determinations,notwithstanding the settlement, if the settlement isinconsistent with the evidence Parties may request that the settlement be keptnonpublic Exceptions for U.S. Govt agencies to access the settlement Any person may request access to the settlement for good cause(very rare) No estoppel for petitioner Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 50. 50Petitioner Estoppel in PGR or IPR Claim by claim Estopped parties Petitioner Real parties in interest Privies of the petitioner Trigger: Final Written Decision by Board Scope: Grounds raised or reasonably could haveraised Forums in which estoppel applies [P]roceeding before the Office Civil action under 28 U.S.C. 1338 ITC proceeding Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 51. 51 Review Petitioner Estoppel Patentability Challenges Raisedor Reasonably ReviewAnother PTOCould Have Petition Proceeding Raised in IPR Final Written Decision:Challenge FailedKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 52. 52 Review Petitioner Estoppel Patentability Challenges RaisedReview Court or ITC or ReasonablyPetitionLitigationCould Have Raised in IPRFinal Written Decision: Challenge FailedKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 53. 53Patent Owner Estoppel in PGR or IPR Cancelation of claim in review precludes patentowner from taking action inconsistent with theadverse judgment, including obtaining in anypatent: Substantially the same claim Claim that could have been filed in the review Specification amendment denied during the review Source: 37 C.F.R. 42.73(d)(3), not statute Concern is owner having continuation duringreview Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 54. 54Handling Confidential Information in PGR or IPR Can file confidential information with motion toseal Proposed protective order should accompany motion Unless and until motion is denied, information will be protected Even petition can have motion to seal PTO has published model and default protectiveorders Can file motion to expunge confidential informationafter proceeding concludes Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 55. 55Transitional Program for Reviewof Business-Method Patents Created by AIA 18 but not codified in Title 35 Availability Available beginning 9/16/12 until 9/16/20 Only for those sued for infringement orcharged with infringement AIA 18(B). No limitation based on the filing date of thepatent No limitation based on the time since thepatent issued Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 56. 56 Transitional Program for Review of Business-Method Patents Availability contd Only for covered business method patent [A] patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions. AIA 18(d)(1) (emphasis added) Technological Invention? [C]onsidered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution. 37 C.F.R. 42.301(b) Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 57. 57 Transitional Program for Review of Business-Method Patents Conducted like a post-grant review (PGR) If the patent under review is governed by the pre-AIA definitions of prior art, then the prior art thatcan be used in a review is limited to That which qualifies under pre-AIA 102(a), or That which qualifies under a new hybrid of pre-AIA 102(a) and 102(b). See AIA 18(a)(1)(C)(ii). Estoppel affecting subsequent court action extendsonly to arguments actually raised (not those thatreasonably could have [been] raised) Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 58. 58 Transitional Program for Review of Business-Method Patents Stay of litigation pending review Statutory factors Whether a stay, or the denial thereof, will simplify the issues inquestion and streamline the trial; Whether discovery is complete and whether a trial date has beenset; Whether a stay, or the denial thereof, would unduly prejudice thenonmoving party or present a clear tactical advantage for themoving party; and Whether a stay, or the denial thereof, will reduce the burden oflitigation on the parties and on the court. Immediately appealable No exception for recent patentee seeking preliminaryinjunction Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 59. 59Tools for Patent Challengers Sometime After 3/16/13 Until 9/16/2059Prior Art Other Basis( 102, 103, or( 101,112)x2 Pat.)Printed Publication Outside InsideCharged with Initial 9-Mo. Initial 9-Mo.Infringement of WindowWindow Bus. Meth. Pat.Business Ex Parte Inter Partes Post-GrantMethod PatentLitigation Reexam ReviewReview Review Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 60. Avoid Paralysis from Too Many Options for Weed Killers atthe Supermarket of Post-Grant ToolsKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 201260 61. 61 Ex Parte ReexaminationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 62. 62Typical Flow of Ex Parte Reexam Request First Office action Final Office actionSNQP?Interview InterviewYES ResponseResponseOrder grantingreexaminationNIRCReexaminationAppealcertificateKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 63. 63Ex Parte Reexamination Highlights Initiated by request for reexamination May be filed by owner or third party or PTO Director Must present a substantial new question of patentability Handled by Central Reexamination Unit (CRU) Ex parte prosecutionShort deadlinesNo extensions of time as a rightInterviews very commonCompact prosecution with liberal after-final amendments No broadening allowed Claim changes can have serious consequences Much interplay with litigationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 64. 64 Ex Parte Requests by Technology800 Mechanical700 Electrical 229 221600 Chemical237 203 235500198 165400155414395 150300305 335 275 107188 228200 156 11878100 124130 138 118133 138 12013714387 020022003 2004200520062007 2008 2009 2010 2011Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 65. 65Case Study No. 1Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 66. 66 Case Study No. 1 PatentU.S. Pat. 5,575,925Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 67. 67 Case Study No. 1 Claim10. A method of installing a catch basin filter in a catch basin,the catch basin comprising:an inlet through which water and solids flow into the catch basin,an outlet through which water flows out of the catch basin, wherein the inlet is positionedabove the outlet, anda plurality of basin sidewalls, each sidewall having an upper end at the inlet and a recesslocated at the upper end, the sidewalls defining a chamber, the grate located on the top of thebasin inlet and having grate sides positioned in the recesses, andthe filter comprising: a filter bag having an open top, a closed bottom and one or more sidewalls extendingbetween the top and the bottom of the bag; and a flap joining the top of each sidewall,said method comprising the steps of: placing the filter bag in the catch basin so that each of the bag sidewalls are adjacent to thecatch basin sidewalls and the filter bag open top is positioned above the filter bag closed bottom; placing each of the filter bag flaps into the recess of the upper end of the catch basin; and sandwiching each of the filter bag flaps between the top of the basin and the grate sides,thereby holding the bag in place.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 68. 68Case Study No. 1 1st Reexams Reexamination Nos. 90/005,603 & 90/005,652 Requested 1999 and 2000; merged Based on same art (Metal Era Basket)The image part with relationship ID rId3 was not found in the file.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 69. 69Case Study No. 1 1st Reexams Reexamination Nos. 90/005,603 & 90/005,652 Certificate issued 2001 Patentability of all claims confirmed PTO agreed with owner that Metal Era Basket did notdisclose the adjacent limitation: each of the bagsidewalls are adjacent to the catch basin sidewalls PTO accepted owners definition (proffered byargument only) of adjacent to require nointervening structure anywhere between the bagsidewalls and the catch basin sidewalls.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 70. 70Case Study No. 1 2nd Reexams Reexamination Nos. 90/007,475 & 90/008,060 Requested 2005 and 2006; merged Based on same art (Construction site plans in city hall offices ofRedmond and Bellevue, WA)The image part with relationship ID rId3 was not found in the file. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 71. 71Case Study No. 1 2nd Reexams Reexamination No. 90/007,475 Request filed 2005. Granted. SNQP raised. First Office action rejection Owners response makes 2 arguments(1) Site Plans do not qualify as prior art(2) Prior art fabric sheet is not bag Submits dictionary definition Submits declarations from PHOSITAs Submits declaration from litigation expert witness PTO accepts (1) and punts (2), issues NIRCKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 72. 72Case Study No. 1 2nd Reexams Reexamination No. 90/008,060 Request filed 2006 Based on same old art + new light New light = declarations from Redmond & Bellevue cityemployees authenticating site plans, their public availability,and dates thereof Request also answers owners substantive arguments re. bag PTO grants request Merged with prior reexam (No. 90/007,475) Rejection reinstated ; PTO says the prior art sheet has acarrying capacity and functions like a bagKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 73. 73Case Study No. 1 2nd Reexam Reexamination No. 90/008,060 contd Owner amends claim 10 to add preforming step:preforming the filter bag Rejection maintained and made final; PTO says the prior artsheet is preformed because it was manufactured After final rejection Owners attorney interview examiner Owner amends preforming step: preforming the filterbag by joining sidewall portions together. Claim allowed with that after-final amendment Certificate issued August 2008Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 74. 74 Case Study No. 1 Am. Claim10. A method of installing a catch basin filter in a catch basin,the catch basin comprising:an inlet through which water and solids flow into the catch basin,an outlet through which water flows out of the catch basin, wherein the inlet is positionedabove the outlet, anda plurality of basin sidewalls, each sidewall having an upper end at the inlet and a recesslocated at the upper end, the sidewalls defining a chamber, the grate located on the top of thebasin inlet and having grate sides positioned in the recesses, andthe filter comprising: a filter bag having an open top, a closed bottom and one or more sidewalls extendingbetween the top and the bottom of the bag; and a flap joining the top of each sidewall,said method comprising the steps of: preforming the filter bag by joining sidewall portions together; placing the filter bag in the catch basin so that each of the bag sidewalls are adjacent to thecatch basin sidewalls and the filter bag open top is positioned above the filter bag closed bottom; placing each of the filter bag flaps into the recess of the upper end of the catch basin; and sandwiching each of the filter bag flaps between the top of the basin and the grate sides,thereby holding the bag in place.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 75. 75 Case Study No. 1 Litigation Atl. Constr. Fabrics, Inc. v. MetroChem, Inc.,No. C03-5645-BHS (W.D. Wash.) Court lifts stay pending reexamination Summary judgment of no infringement liability No pre-certificate damages Intervening rights for Defendant to sell off inventory Defendant redesigns its product to have a seamless bag Owner/Plaintiff forced to dismiss infringement count withprejudiceKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 76. 76 Case Study No. 1 Lessons Central Reexamination Unit is the (PatentWrecking) CRU The reason the 2nd reexam did more damage with worse art? Authenticating evidence as new light to supporta second request Quasi inter partes ex parte reexamination Merely forcing an amendment can be victory Eliminate liability for past infringement Intervening rights to sell of inventory Enable design-around Delay caused by reexamination 3.5 years for a rather simple reexamination (no appeals)Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 77. 77Stay of Litigation Pending Reexamination Common for at least one party (usuallyaccused infringer) to seek a stay of litigationpending completion of a reexamination Within the sound discretion of a district court 57.4% of contested motions for stay pendingreexamination have been granted nationwidesince 1991. LegalMetric (Oct. 2011).Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 78. 78 Source: LegalMetric (Oct. 2011)Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 79. 79 Stay of Litigation Pending Reexamination contdWhy does it matter to accused infringer? Litigation is expensive Race to final judgment:Successful reexam is nothelpful if it concludes afterfinal court judgmentKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 80. 80 Case Study No. 3Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 81. 81 Case Study No. 3 contd Translogic Tech., Inc. v. Hitachi, Ltd. U.S. Patent 5,162,666 Transmission Gate Series Multiplexer Owner: Translogic Tech., Inc. LESSON: Reexamination can be a valuableinsurance policy against a loss in court!Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 82. 82Case Study No. 3 - TimelineKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 83. 83Case Study No. 3 Timeline contdKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 84. 84 Case Study No. 3 Final Decisions In re Translogic Tech., Inc., 504 F.3d 1249 (Fed.Cir. 2007) Affirms PTO Board rejections Hitachi participated at Fed. Cir. as intervenor Translogic Tech., Inc. v. Hitachi, Ltd., 250 F.Appx 988 (Fed. Cir. 2007) (nonprec.) Summarily vacates district courts judgment Bye, bye $86.5 millionKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 85. 85Case Study No. 3 Simplified View Non-FinalComplaint Judgment Judgment for VacatedBPatenteeRequest forFinal JudgmentCanceling ReexamClaimsKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 86. 86Case Study No. 3 Variation Non-FinalAffirmedComplaintJudgment for(FinalBPatenteeJudgment)Request forFinal JudgmentCanceling ReexamClaimsKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 87. 87Case Study No. 3 - Lessons Reexam is an insurance policy for defendants The significance of a stay The powerful differences in claim constructionand burden of proof and perspective appliedby the PTO and courts Quasi inter partes ex parte reexamination Participation in Federal Circuit appeal by third-party requester as intervenor Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 88. 88 Strategic Considerations:Goals for Third-Party Requester contd Cancelation of claims No infringement liability Narrowing of claims No pre-certificate infringement liability Create intervening rights for future Narrowed claims may not be infringed Create a more favorable prosecution history Establish materiality of withheld reference Hope patent owner commits inequitable conductKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 89. 89Reexamination vs. Litigation Assuming both are available for your validity question(i.e., printed publication prior art) DifferencesNature of decision makerClaim construction/interpretationEvidentiary burdensNature of supporting evidenceNumber of arguments that can practically be madeEffect of overall equitiesClaims frozen or fluidParticipation rightsCostTimingStanding requirementsKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 90. 90Ex Parte vs. Inter PartesReexamination Inter Partes available only if patent was filedon or after November 29, 1999 Differences Possible anonymity Estoppel Participation Cost Duration Likelihood of favorable result? Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 91. 91 Ex Parte vs. Inter Partes Third-Party Participation Ex parteInter partes Request Request Comment on every Officeaction and response Appeal to Board Participate in owners Appeal to Federal Circuit ifappeal at Federal requested on or afterCircuit as an intervenorNovember 22, 2002Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 92. 92 Reexamination Duration (Mos.)Ex ParteInter PartesAll TimeMedianAll TimeAvg. 2012Q1 Avg. 0.0 6.0 12.018.0 24.0 30.0 36.0 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 93. 93 ResultsEx Parte Reexamvs. Inter Partes ReexamAll All canceled confirmed12% Allconfirmed11% 24%All canceled 44% SomeSomechanges changes45% 64% Third-Party-Requested Ex Parte Reexams OnlyKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 94. 94 Cost of Inter Partes Reexamination94 Cost of Inter Partes Reexamination Source: AIPLA Report of the Economic Survey 2011Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 95. 95 Overview of Tools for Patent OwnersKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 96. 96Correction Tools for U.S. Patent Owners Until 9/16/12Printed Publ. Error inPrior Art Patent Invalid orMinorInoperative NoCorrection isAmendmentOverclaimedOverclaimed Underclaimed Specification Obvious Needed Corrective Ex ParteCertificate ofDisclaimer Reissue Claim Reexam CorrectionConstructionKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 97. 97Correction Tools forU.S. Patent Owners On & After 9/16/12 Printed Publ.Error in Information Prior ArtPatent Invalid orMinorInoperative No Correction isAmendmentOverclaimedOverclaimedUnderclaimed SpecificationObvious NeededCorrective Ex ParteSuppl.Certificate ofDisclaimerReissue Claim ReexamExam Correction ConstructionKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 98. 98 ReissueKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 99. 99Reissue Highlights Filing for reissue Only owner can file Some special requirements re. format and oath Owner must admit existence of an error Not all errors are correctable by reissue Broadening sometimes possible Filed as a broadening reissue within two-year anniversary of grant Limited by rule against recapture Familiar, flexible proceeding Usual deadlines; extensions of time available RCE, continuation & divisional possible Claim changes can have serious consequences Protests possibleKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 100. 100Errors Correctable by Reissue Errors in the text of the specification or the drawings Claims too broad Based on prior art Based on 35 U.S.C. 112 Just narrowing dependent claims may not be enough Claims too narrow Cannot broadened more than 2 years after grant Different statutory categories are acceptable Cannot violate the recapture rule Inventorship PriorityKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 101. 101Errors Corrected by Reissue in 2008 Inventorship 1.2% Priority Specification5.4%1.4%Overclaiming 9.2% Other ClaimError 12.8%Underclaiming 70.0%Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 102. 102Errors Not Correctable by Reissue Deliberate acts Inequitable conduct Failure to meet the enablement, writtendescription or best mode requirements of 35U.S.C. 112 Failure to file divisional or continuationapplication Undesired or unnecessary terminal disclaimerKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 103. 103 Case Study No. 1Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 104. 104Case Study No. 1 contdU.S. Patent No. 5,522,283 Claim 1 of: A circular saw blade straightening andtensioning machine for reducing or eliminating unevenness in circular sawblades, comprising:...a set of straightening and tensioning rollers the set comprising an uppershaft and a lower shaft ... Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 105. 105 Case Study No. 1 contd Eccentricity Limitations1. A circular saw blade straightening and tensioning machine for reducing oreliminating unevenness in circular saw blades, comprising:... a hub mounted on one end of each of the upper and the lower shafts,each of the hubs comprising a center portion horizontally eccentric ... and a pair of sideportions disposed on opposite sides of the center portion, each of the side portionsbeing horizontally eccentric ... in a direction opposite to that of the center portion;...Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 106. 106Case Study No. 1 contd RE36,409 1st Reissue Original Application Filed January 9, 1995 Issued June 4, 1996 RE36,409 - 1st Reissue Filed June 4, 1998(2nd anniversary of original patent grant) Issued November 30, 1999 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 107. 107 Case Study No. 1 contdEccentricity Limitation as Revised in the 1st ReissueNew Claim 15 Eliminates tensioning limitation. Refers to roller shafts and saw blade surfaces as first andsecond rather than upper and lower. Claims hubs with an eccentric center roller and centric side rollers. But... This left open the possibility for a competitor to redesign its product so that the center roller was centric with the shaft axes while the side rollers were eccentric. Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 108. 108 Case Study No. 1 contdUS Pat No. RE37,833 2nd ReissueOriginal Application Filed January 9, 1995 Issued June 4, 19961st Reissue Filed June 4, 1998 Issued November 30, 1999 RE37,833 - 2nd Reissue Filed as a reissue continuation November 30, 1999 (the day the 1st Reissue issued) Issued September 10, 2002 (more than 6 years after original patent issued) Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 109. 109 Case Study No. 1 contd LessonBecause the 1st Reissue was a broadening reissue,the 2nd Reissue could also be used to broadenclaims, despite the filing of the 2nd Reissue over3 years after the grant of the original patent.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 110. 110 Advantages of ReissueRelative to Ex Parte Reexamination Claims cannot be broadened via reexamination but may bepossible via reissue Reissue permits various corrections to be made not just changesto the claims in response to rejections or prior art Reissue is examined by the same examiner as the original patentwhile reexamination is handled by CRU Reissue prosecution can be terminated by patent owner butreexamination cannot be terminated Reissue permits extensions of time as a right Reissue permits the filing of continuations, divisionals andrequests for continued examination Reissue prosecution is, for the most part, familiarKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 111. 111 Reissue vs. Reexam: No. Filed by Owner1300 Reissues Filed12001100 Owner-Requested1000 Reexams Filed9008007006005004003002001000 90 91 92 93 94 95 96 97 98 99 00 01 02 03 04 05 06 07 08 09 1011 Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys9 May 2012 112. 112Strategic Considerations for Patent Owners Review patents as soon as possible after issuance forerrors that can be corrected via a certificate ofcorrection Docket at least one reminder to consider filing areissue application within two years of issuance sothat a broadening reissue can be considered Before asserting a patent against a third party, reviewthe patent for errors that can be corrected bydisclaimer, a certificate of correction, reissue or exparte reexaminationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 113. 113Strategic Considerations for Third Partiesin Light of Corrective Options for Patent Owners When developing an invalidity or noninfringement positionwith respect to a patent of a third party, consider whether thepatent owner could correct the error. Examples include: Obtaining a broadening reissue within two years of issuance Overcoming a validity issue by filing a narrowing reissue Receiving confirmation of the validity of a claim by survivingreexamination or having a request for reexamination denied Eliminating errors under 35 U.S.C. 112 , 1 & 2 by filing a certificateof correction Eliminating a doubling patent scenario by filing a disclaimerKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 114. 114SupplementalExaminationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 115. 115Cleansing Effects of Supplemental Examination No inequitable conduct from original prosecutionrelating to information that is considered,reconsidered or corrected in supplemental exam. Exceptions: Prior allegation of inequitable conduct pled withparticularity in litigation Litigation commenced before supplemental examination(and resulting reexamination) concludedKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 116. Therasense and Supplemental116 Examination If it is necessary to amend claims based on a prior artreference during a reexamination after supplementalexamination, then the prior art is but-for materialand if intent is also shown then inequitable conducthas been proven. Therasense significantly diminished the need forsupplemental examination such that it may only beneeded when a patent owner wants to eliminate anydoubt that certain conduct has not tainted a patent.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 117. 117 Therasense Inequitable conduct is defined in Therasense asrequiring proof that an applicant misrepresented oromitted material information with the specific intentto deceive the PTO. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276(Fed. Cir. 2011) (en banc). The Federal Circuit requires that intent andmateriality be separate requirements, that theevidence for intent must show a deliberate decisionto deceive, and that the evidence for materialitymust show that but-for the deception, the PTOwould not have allowed the claim.Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 118. 118 Fraud & Practitioner Discipline If PTO believes a material fraud may have takenplace, then PTO shall refer the matter to theAttorney General (AG) Referral is confidential unless & until AG presses criminal charges Will suspect be given notice? PTO regards . . . material fraud . . . to be narrower than inequitable conduct as defined . . . in Therasense. 77 Fed. Reg. 3666. Supplemental examination does not limit liability forWalker Process fraud and related offenses Supplemental examination does not limit ability ofOED to investigate practitioner conductKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 119. 119Requesting Supplemental Examination Who can request supplemental examination? Only patent owner Requester must establish ownership via Rule 3.73(b) filing Third parties are prohibited from participating When can supplemental examination be requested? Statute and rules provide no time limit Perhaps PTO will limit to patents having enforcementpotential? Who decides requests for suppl. exam. requests? CRU?Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 120. 120Requesting Supplemental Examination Only patent owner can request Request for PTO to Consider or reconsider or correct Information believed to be relevant to the patent PTO decides Within 3 months Whether the request raises an SNQP If so, PTO will Issue certificate saying so Order ex parte reexaminationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 121. 121 Request Requirements contd Fee $5,180 suppl. exam. fee + $16,120 ex parte reexam. fee (refunded if reexam. not ordered) = $21,300 + possible over-length document fees + $170 for each non-patent document with 21-50 pages + $280 for each addl 50 pages or fraction thereof Items of information Items that PTO is to consider, reconsider or correct Items owner believes to be relevant to the patent Each item must be reduced to written form No more than 10 items can be included in one requestKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 122. 122 Request Requirements contd Items of information contd Statement for each item explaining why either consideration reconsideration, or correction . . . of that item is being requested. Identification of each aspect of patent for whichsupplemental examination is sought Examples: Abstract, drawing, specification, claims, priorityentitlement If any identified claim includes a 112/6 limitation, request mustpoint out the corresponding structureKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 123. 123 Request Requirements contd Identification of each issue raised One item of information may raise multiple issues There is no limit on the number of issues raised Detailed explanation of each issue For each issue, request must discuss each item of information, and aspect of the patent If issue arises under 101 or 112, request must indicatesupport for each limitation in each claim to be examined withrespect to that issue If issue arises under 102 or 103, request must indicatewhether each limitation in each claim to be examined withrespect to that issue is or is not met by the informationKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 124. 124 Correction Tools forU.S. Patent Owners On & After 9/16/12 Printed Publ. Error in Information Prior Art Patent Invalid or MinorInoperative No UnderclaimeCorrection isAmendment OverclaimedOverclaimed Specification d Obvious Needed Certificate Corrective Ex Parte Suppl. Disclaimer ReissueofClaim Reexam ExamConstruction CorrectionKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 125. 125 Supplemental Examinationvs. Reissue Advantages of Suppl. Exam. over ReissueCleansing effect against inequitable conduct chargesHigher threshold to initiate (SNQP vs. error)No need to admit errorVery quick favorable decision if reexamination is not ordered Advantages of Reissue over Suppl. Exam.Lower threshold to initiate (error vs. SNQP)Flexibility (e.g., extensions of time, RCEs, etc.)Before Tech. Ctr. rather than CRU?No 10-item limitNo statutory risk of referral to AGGreater amendment rightsKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 126. 126Supplemental Examination vs. Ex Parte Reexam Advantages of Suppl. Exam. over Reexam. Cleansing effect against inequitable conduct charges Broader grounds to initiate Can argue against existence of SNQP Very quick favorable decision if reexamination is not ordered Advantages of Reexam. over Suppl. Exam. Narrower grounds to initiate No statutory risk of referral to AG Narrower duty of disclosure No 10-item limit Kevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012 127. 127For More InformationKevin B. Laurence, Partner Palm Springs, California(801) 578-6932 Direct(801) 578-6999 FaxOctober 17-19, 2012200 S Main Street, Suite 1100Salt Lake City, UT 84111kblaurence@stoel.comMatthew C. Phillips, Partner(503) 964-1129 Direct(503) 517-9919 Fax9600 SW Oak Street, Suite 560Portland, OR 97223matthew.phillips@renaissanciplaw.com 128. 128For More InformationKevin B. Laurence, Partner Orlando, Florida(801) 578-6932 Direct(801) 578-6999 Fax April 7-9, 2013200 S Main Street, Suite 1100Salt Lake City, UT 84111kblaurence@stoel.comMatthew C. Phillips, Partner(503) 964-1129 Direct(503) 517-9919 Fax9600 SW Oak Street, Suite 560Portland, OR 97223matthew.phillips@renaissanciplaw.com 129. Further discussion is welcome at the following129 LinkedIn group: Post-Grant Patent Practice and its subgroupsEPO Opposition Practice Patent Reexam &Review PracticeKevin Laurence & Matt Phillips for the Chartered Institute of Patent Attorneys 9 May 2012