FWD Boilerplate Encourages Rework
Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim (IPR/PGR/reexam). Last week the Federal Circuit clarified the scope of this rarely applied PTAB rule in SoftView v. Apple.
In practice, the agency has very rarely applied Rule 42.73. Examiners don’t appear to be aware of the rule when prosecuting continuation filings or reexamination/reissues. To my knowledge there has been no examiner training and there are no MPEP insert paragraphs. And PTAB judges prefer to re-apply the art used to cancel the earlier claims over a less familiar estoppel analysis.
Far more troubling, however, is the PTAB practice of suggesting to Patent Owners that they may obtain new/amended claims after claim cancellation in an IPR/PGR through patent reexamination or reissue.
Most (if not all) Final Written Decisions (FWD) over the past 3-4 years have included the following footnote text where the Board orders claim cancellation:
Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (see 84 Fed. Reg. 16,654 (Apr. 22, 2019))
(emphasis added)
But, amendments of cancelled claims via patent reexamination/reissue are precluded by the Rule 42.73 (as I have pointed out for years now) and now the PTO’s reviewing court has agreed, explaining last week in Softview (here):
It is reasonable to characterize “obtaining” a new claim that is not patentably distinct from a finally refused or canceled claim” as an “action inconsistent with the adverse judgment” under 37 C.F.R. § 42.73(d)(3), because such an action can fairly be viewed as an effort to circumvent the prior adverse judgment. . . SoftView does not challenge the Board’s holding that claims amended during an ex parte reexamination are “obtained” for purposes of section 42.73(d)(3)(i).
(emphasis added)
Aside from discontinuing the use of its incorrect and misleading FWD boilerplate, the agency needs to provide examiner training and MPEP discussion/analysis of Rule 42.73 scenarios. Given the agency’s expressed interest in tamping down on repeat litigation (as argued to justify its new terminal disclaimer rule package) it should enforce its existing rules on point before seeking more.