The Importance of Interview
Summaries in ex parte Patent Reexamination
Last Friday, Star Scientific
(hereinafter "Star") released an update on their ongoing ex parte
patent reexaminations of U.S. Patents 6,425,401 & 6,202,649. The
reexaminations are directed to Star's patented tobacco curing
technologies that are the subject of an ongoing litigation with R.J
As Star is a publicly traded company, and the litigation is fairly high
profile, the update was widely
reported to outlets such as the Wall Street Journal and CNBC.
The Star press release explained:
We received notice today from
the US Patent & Trademark Office that it was terminating the reexamination
of Claims 4, 12 and 20 of the "649″ patent and claim 41 of the "401″ patent
that had been requested by RJ Reynolds in early 2009. The reason cited for the
termination of the process was that the patent owner's response to the Nonfinal
Office Action that was filed on 11/10/09 allegedly did not include "a [separate
written] summary of the interview, as is required by 37 CFR 1.560(b)." We want
to make clear that the claims were not cancelled because reexamination of the
claims found them invalid, but rather because the PTO asserted the patent owner
did not comply with the procedural requirement for providing a written
interview summary. The reexamination proceeding "is subject to reopening by the
[Patent & Trademark] Office, or upon petition," and Star's patent counsel
will file petitions today to reopen the proceedings.
We disagree with the
termination in the strongest possible terms, and we are taking all necessary
actions to reopen the reexamination process. Star's patent counsel, Banner
& Witcoff, believe that all appropriate steps were taken during the
reexamination proceedings. The PTO failed to acknowledge a timely written
summary of the interview that had been filed within one month from the date of
the interview. The firm is confident that the petitions to reinstate the
proceedings will be granted so that the claims can be evaluated on their
Upon review of the Star
reexamination file histories, I will at least agree that the terminations have
nothing to do with validity.
On the other hand, in my opinion,
appropriate steps were clearly not taken during the reexamination
proceedings. Likewise, the petitions filed last week will almost certainly
First, some background into
interviews in ex parte patent reexamination.
Unlike regular patent
prosecution, patent reexamination (hence the existence of this blog) requires
an understanding of different rules, procedures and statutes. One
important difference in ex parte patent reexamination is that there
are significant consequences for failing to submit a statement of the substance
of the interview.
The requirements for an interview
during an ex parte reexamination are similar to those for original
patent prosecution with one important distinction. Namely, in patent
reexamination, the consequence of missing the deadline for submission of the
statement of the substance of the interview will result in the TERMINATION of
the reexamination proceeding (37 C.F.R. 1.550(d)). An examiner in patent
reexamination has no power to waive this requirement.
Once terminated, a petition
to revive the reexamination proceeding for unavoidable or unintentional
delay will then be necessary to revive the reexamination proceeding;
this brings us back to the Star matter.
The good news for Star is that
while the situation is professionally embarrassing for the parties involved, in
almost all cases, getting back on track requires a simple petition
filing. The bad news is that the petitions filed last week are incomplete.
To understand the problems with
the petitions, a brief review of the Star interviews in ex parte
patent reexamination is in order.
Star, a day prior to their
interview, filed a list of anticipated topics for discussion during the
interview. This document is typically referred to as an "interview
agenda" and is sometimes requested by the PTO so that examiners may prepare for
the interview. Once the interview of October 22, 2009 was completed, the
attorney should have filed an "interview summary." As can be appreciated,
the agenda identified topics Star's attorney planned to discuss as of October 21, 2009 (i.e., when the agenda was faxed). Conversely, the
summary would have identified the topics ACTUALLY discussed, the next
day, on October 22, 2009. Simply stated, Star
filed an agenda but did not file a summary.
In the current petitions, Star is
curiously arguing that the interview agenda serves as the interview
summary. Unless Star's attorneys are clairvoyant, this position is a
non-starter. The agenda was written a day prior to the actual interview.
Furthermore, had the Office been willing to accept the agenda in place of the
interview summary they wouldn't have terminated the Star proceedings in the
The purpose of the summary is to
alert the public of what actually took place during the interview. For
example, perhaps the Examiner brought up points of his own, perhaps the
attorney added a topic between the agenda and the interview, perhaps different
prior art came up in the interview, etc, etc. Surely, the agenda may end
up accurately reflecting the content of the interview discussions, but, that
does not excuse the requirement that the Patent Holder file a summary.
The appropriate petitions to
revive the proceedings are for unintentional or unavoidable abandonment.
For such a petition to be proper, it must include the late filings
(i.e., interview summaries) that caused the termination. In this
case a petition under 37 C.F.R. 1.137 (b) would be appropriate that
provides the missing interview summaries and a statement that the entire delay
in providing the summary was unintentional; that's it.
Instead, Star filed a petition
that re-submitted the previously provided agenda, the missing summaries
still have yet to be provided. A copy of Star's petition for the '401
Patent is found (here)
(See the interview agenda of Exhibit A).
Just being an armchair
quarterback here but, Star would be wise to file new petitions (that include
the missing summaries) before they find themselves drafting yet another awkward
The commentary that follows is the opinion of the author and in no way
constitutes legal advice. Neither the author of this post nor the firm of Oblon
Spivak have any professional or financial interest relative to the parties
involved, or the outcome of the dispute.
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