USPTO Clarification: Office Will NOT Reexamine Patent Claims That Weren't Specifically Requested

Last week, the USPTO released a notice clarifying that claims not specifically identified and addressed for reexamination would generally not be reviewed by the USPTO.

The Office is clarifying its practice to make it clear that, where reexamination is requested for fewer than all of the patent claims, the Office's determination on the request (the order granting or denying reexamination) will generally be limited to a review on the merits of only the claim(s) for which reexamination was requested. In the examination stage of the proceeding, the Office will generally examine only those claims for which reexamination was requested, and for which a substantial new question of patentability (SNQ) was raised.

In special cases however, examiners are given discretion to review non-requested claims

This policy facilitates the Office's compliance with its statutory mandate for special dispatch in handling reexamination proceedings. In appropriate instances, however, the Office may (in its sole discretion) decide to examine some or all of the non-requested claims (provided that at least one SNQ has been established by the request or has been sua sponte determined to exist by the Office).

The Office reiterated its position on reexamination requests made during pending litigation and maintained that reexamination would be suspended or dropped once a final determination was made on the validity of the claims:

Additionally, where a final decision of a federal court, after all appeals, holds some of (one or more of) the patent claims invalid or unenforceable, the claims held invalid or unenforceable will not be reviewed on the merits in any reexamination proceeding. Further, review on the merits of claims is barred in an inter partes reexamination proceeding for any patent claim whose validity is upheld in a final decision of a federal court, after all appeals, if the person who filed the request was a party to that federal court litigation (or in privity with a party to that federal court litigation). 35 U.S.C. 317(b). If reexamination of all the patent claims becomes barred as a result of a federal court decision, a reexamination proceeding cannot be initiated based on the patent, and the Office will discontinue reexamination, if it has already been initiated.

The notice follows the Eastern District of Virginia's ruling in Sony Computer Entertainment America Inc., et al. v. Jon Dudas, Civil Action No. 1:05CV1447 (E.D.Va. May 22,2006), Slip Copy, 2006 WL 1472462, where the court upheld the Office's discretion to not reexamine the non-requested claims of two patents in an inter partes reexamination proceeding. Read the opinion here, courtesy of Patently-O.