Notice regarding options for amendments through reissues or reexaminations

The USPTO published a notice of information summarizing existing Office practice on reissue and reexamination options through which a patent owner may amend claims involved in an AIA trial, both before and after the PTAB issues a final written decision. It also summarizes the factors the USPTO currently considers in deciding whether to stay or suspend a reissue proceeding, or stay a reexamination, involving a patent in an AIA proceeding, and when to lift such a stay or suspension. It describes current practice and sets no new rule. Patent owners get a summary of the reissue and reexamination routes for amending claims that are involved in an AIA trial. They can use it to plan around the timing of a final written decision and the chance of a stay or suspension. Petitioners can see that factors exist for deciding whether parallel reissue or reexamination proceedings will be stayed or suspended, and when a stay may be lifted. The notice responds to comments and questions received on the October 29, 2018 notice proposing changes to motion to amend practice. The webpage text names no statute, rule or decision as its basis, and the detailed content is in the Federal Register notice. WHAT IT DOES: Summarizes current practice on reissue and reexamination options in which patent owners may amend claims before and after the PTAB issues a final written decision in an AIA trial. It also summarizes the factors the USPTO currently considers in deciding whether to stay or suspend a reissue proceeding, or stay a reexamination, involving a patent in an AIA proceeding, and when and whether to lift such a stay or suspension. WHO AND WHEN: Applies to patent owners whose patents are involved in AIA trial proceedings, and to reissue and reexamination proceedings involving those patents. The page lists the notice as dated 2019-04-19 and gives no separate effective date. It describes existing practice, and the full text is in the Federal Register. KEY QUOTE: "This notice provides a summary of current practice regarding reissue and reexamination options in which patent owners may amend claims before and after the Patent Trial and Appeal Board (PTAB) issues a final written decision in an AIA trial proceeding." (Notice regarding options for amendments through reissue or reexamination) EARLIER GUIDANCE AFFECTED: None identified in the document. It responds to the October 29, 2018 notice requesting comments on proposed modifications to current motion to amend practice and procedures in AIA trial proceedings, but it does not rescind or modify that notice. PRACTICE TIP: Read the full Federal Register notice before choosing between a motion to amend and a reissue or reexamination. Plan for the stay or suspension factors and the timing relative to the final written decision, because this webpage only summarizes them.