October 31, 2013 Articles

Claim Scope Statements in U.S. Patent Office Litigation Proceedings

As part of the AIA, Congress revised 35 U.S.C. Section 301 to allow such submissions.

By Kenneth R. Adamo

As part of the recent Leahy-Smith America Invents Act (AIA), Congress revised 35 U.S.C. § 301 to allow submissions of a "claim scope statement" to the U.S.Patent and Trademark Office (USPTO) for use in patent office litigation proceedings. (Section 6(g) of the AIA). These include inter partes review proceedings and the post-grant review proceedings that will be applicable to U.S. patents with an effective filing date on or after March 16, 2013.

New 35 U.S.C. § 301(a)(2)
Basically, 35 U.S.C. § 301(a)(2) and (e) allow a third party to submit anonymously a claim scope statement: a statement of the patentee, filed in a proceeding before a federal court or the USPTO, "in which the patent owner took a position on the scope of any claim of a particular patent." The third party must also submit any other document, pleading, or evidence from the proceeding that addresses the statement. 35 U.S.C. § 301(c). Deposition testimony of the patent owner occurring during the course of the federal court proceeding may be submitted in redacted form. See Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith American Invents Act, 77 Fed. Reg. 46,615, 46,617 (Aug. 6, 2012). Also, the third party must present a detailed explanation, in writing, as to how the information in the submission is pertinent to the claim or claims of the patent and how it is applied to each claim. 37 C.F.R. § 1.501 (a)(3), (b)(1).

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