USPTO Announces Discretion in Reexamining Less Than All the Patent Claims

On October 5, 2006, the United States Patent and Trademark Office (Office) is clarfied its general policies on addressing requests for reexaminaton of fewer than all the claims in a patent, and on conducting examination following requests that fail to raise a substantial new question of patentabilty (SNQ) for some of the claims requested (but do raise a SNQ as to at least one claim requested):

1. The request for reexamination: If reexamination is requested for fewer than all of the patent claims, the Office's determination on the request (the order grantig or denying reexamination) will generally be based on a review on the merits of only the claim(s) for which reexamnation was requested.
2. The examination stage of a reexamation proceeding: at the examation stage of the proceeding, the Office will generally only examine claims for which a) reexamination was requested, and b) a substantial new question of patentabilty (SNQ) was raised.

In appropriate instances, however, the Offce may (in its
sole discretion) decide to examne some or all ofthe 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 clarfication in policy was made for both ex parte reexamination and inter pares reexamination. The Office has recently incorporated the substance of ths Notice, in MPEP Chapter 2200 for ex parte reexamination, and MPEP Chapter 2600 for inter pares reexamination in the August 2006 Revision 5 ofthe eighth edition ofthe MPEP.

According to the accompanying explanation, this matter was squarely addressed on May 22, 2006, by the U.S. Distrct Court for the Eastern
Distrct of Virginia, in Sony Computer Entertainment America Inc., et al. v. Jon W. Dudas, Civil Action No.1 :05CV1447 (E.D.Va. May 22,2006) where the district court upheld the Office's discretion to not reexamne the non-requested claims of two patents in an inter partes reexamnation proceeding. In short, the court found that neither the statute nor the MPEP requires the Offce to examine, on the merits, the non-requested claims. While the Office has discretion to examne non-requested claims, the Offce may also choose not to exame non-requested claims.

In an instace where reexamination is not requested as to a claim, the requester cannot complain as to the Office's decision not to exame that claim in the reexamation, since requester was free to request reexamination of all the claims of the patent, but made the choice not to do so.