USPTO Proposes Rule to Limit Anonymous Patent Challenges – Comments Due Aug. 21
Anonymous patent challenges may soon face new disclosure requirements. The U.S. Patent and Trademark Office (USPTO) has proposed a rule that would require parties seeking ex parte reexamination of a patent to identify the real parties in interest. The USPTO aims to enforce limits on repeat patent challenges with the new rule, which is open for public comment until Aug. 21.
Patent Challenges and Anonymity
There are three ways in which someone may challenge a granted U.S. patent:
- Post-grant review, which must be filed within nine months of grant, and expressly involves the third-party requester in the proceeding
- Inter partes review, which may be requested at any time during the patent term after the patent has been granted for at least nine months, and expressly involves the third-party requester in the proceeding
- Ex parte reexamination, which may be requested at any time during the patent’s term, but the requester is not a party to the reexamination proceeding once initiated
Post-grant reviews and inter partes reviews require disclosure of the real parties in interest at the time they are filed and thus cannot be filed anonymously. However, the current rules permit submission of an ex parte reexamination request without identification of either the person making the request or the real party in interest, thus allowing those who request ex parte reexaminations and their sponsors to remain anonymous. Historically, this has enabled competitors and members of the public to seek ex parte reexamination of patents anonymously, ostensibly to encourage the public to seek reexamination of patents in appropriate circumstances without fear of reprisals that could stifle challenges to otherwise invalid patents.
But this month, the USPTO proposed a rule change to require a separate disclosure of the real parties in interest to the USPTO in ex parte reexamination requests, even in cases where the request is otherwise filed anonymously. For an anonymously requested ex parte reexamination, the requester may ask that their identity and the identity of the real parties in interest be kept confidential by the USPTO to preserve their anonymity.
New Disclosure Requirements Could Limit Repeat Patent Challenges
There are statutes that prevent (estop) a party from requesting (or maintaining) a proceeding at the USPTO with respect to same patent on any ground that the petitioner raised (or reasonably could have raised) during that inter partes review or post-grant review. Ex parte reexamination is a proceeding at the USPTO to which these statutes apply, to prevent third parties from serially attacking a patent’s validity in different proceedings at the USPTO.
In present practice, when a third party submits an anonymous request for ex parte reexamination, a certification is required, stating that the statutory estoppel caused by post-grant review and/or inter partes review does not apply to disqualify the third party from requesting ex parte reexamination. But the certification does not require disclosure of the requester or the real parties in interest to the USPTO.
In the new proposed rule, the USPTO stated that it is receiving many requests for ex parte reexamination for patents for which post-grant review or inter partes review previously had been requested. The USPTO’s stated concern is whether the estoppel statutes barring a request for ex parte reexamination in such circumstances apply, noting that it cannot independently determine this without a disclosure of the real party in interest at the time the ex parte reexamination request is made.
The USPTO proposes to address this concern by amending the rules. The amendment would require a third party who requests ex parte reexamination to include a separate statement identifying the requester and all real parties in interest to the ex parte reexamination request. If the third party wishes to keep the requester and the real party in interest anonymous, the third party must request that the real party in interest statement be kept confidential.
As the USPTO observes, determining whether a party is a real party in interest to the request for ex parte reexamination is highly fact-dependent. The Notice of Proposed Rulemaking refers to several sources requesters can consult to determine the real party in interest.
Next Steps
The window to comment on the proposed rule change expires on Aug. 21, which suggests that the USPTO intends to finalize this proposed rule change soon. Contact Mary Drabnis or any member of the Phelps intellectual property team with questions.
