The USPTO Announces Proposed Plans to Streamline Reexamination Proceedings

On April 25, 2011, the United States Patent and Trademark Office published a notice in the Federal Register (Vol. 76, No. 79 22854) proposing a number of changes to ex parte and inter partes reexamination proceedings. The notice also announced a public meeting to be held June 1, 2011 at 1:30 p.m. and is soliciting public opinions on the changes being considered by the USPTO. The notice indicates that the proposed changes are intended to streamline the procedures governing ex parte and inter partes reexamination proceedings. According to the notice, “The changes are intended to achieve faster more efficient resolution of the substantial new question of patentability (SNQ) for which reexamination is ordered. The changes proposed are complementary to the post-grant provision in the pending America Invents Act currently being considered by Congress.” Additional information regarding the America Invents Act will be provided in our next blog entry later this month.

Currently, according to USPTO statics, ex parte average pendency is 25.7 months with a median pendency of 20 months and inter parte pendency is 36.5 months with a median pendency of 33 months, as of December 31.

Below are the proposed changes from the USPTO:

1. “Requester must separately explain how each SNQ presented in the request is 'new' relative to other examinations of the patent claims," rather than merely stating what the SNG is believed to be.

2. “Requester must explain how the references apply to every limitation of every claim for which reexamination is requested.”

3. “Requester must explain how multiple SNQs raised in the same request are non-cumulative of each other; cumulative SNQs will be deemed to constitute a single SNQ.”

4. “The examiner may select one or more representative rejections from among a group of adopted rejections.”

5. “Requester’s declaration and other evidence will be mainly limited to the request. ... Third party requester in the proceeding will be limited to rebutting a point made in an examiner’s office action or in a Patent Owner’s response.”

6. “Patent owner’s amendments and evidence will be mainly limited to the first Action Response. ... In ex parte reexamination, the Patent Owner’s submission of amendments and evidence will be generally limited to the earlier of: 1. The Patent Owner’s optional statement under 35, U.S.C. 304, if the Patent Owner does not waive the statement or 2. If the Patent Owner waives the statement, the Patent Owner’s response to an FAOM. In inter partes reexamination, the Patent Owner’s amendment and declaration evidence will be generally limited to the Patent Owner’s response to the FAOM."

7. “Claim amendment will not be entered unless accompanied by a statement explaining how the proposed new claim language renders the claims patentable in light of an SNQ.”

Examples of petitions filed in reexamination proceedings taken directly from the notice:

EXAMPLES OF PETITIONS FILED IN REEXAMINATION PROCEEDINGS

Relief RequestedPetitionable?Opposable?

Review of refusal to grant ex parte or inter partes reexam (see MPEP 2248, 2648)Yes -- 1.181No

Vacate as ultra vires an order granting ex parte or inter partes reexam (see MPEP 2246, 2646)Yes -- 1.181Yes

Review of a finding of an SNQ in an order granting ex parte or inter partes reexam (see 75 FR 36357)No (but se 75 FR 36357 in ex parte reexam)No

Vacate filing date of ex parte or inter partes reexam based on failure to comply with 37 CFR 1.510 or 1.915Yes -- 1.181Yes

Extension of time to respond to an Office action by Patent Owner in ex parte reexamYes -- 1.550(c)No

Extension of time to respond to an Office action by Patent Owner in inter partes reexamYes -- 1.956No

Extension of time to submit comments by Third Party Requester (see 35 USC 314(b)(2))NoNo

Extension of time to file a notice of appeal or brief on appeal by Patent Owner in ex parte reexam (see 37 CFR 41.31, 41.37, 41.43)Yes -- 1.550(c)No

Extension of time to file a notice of appeal or brief on appeal by any party in inter partes reexam (see 37 CFR 41.61, 41.66)Yes -- 1.183No

Striking another party’s improper paper (or portion thereof) from the fileYes -- 1.181Yes

Protection of proprietary information being submitted under sealYes -- 1.59(b)Yes

Waiver of page or word limit requirementYes -- 1.183No

Review of refusal to enter amendmentYes -- 1.181Yes

Withdrawal of final Office actionYes -- 1.181Yes

Revival of terminated proceeding based on Patent Owner's "unavoidable" delay and acceptance of lat paperYes -- 1.137(a)No

Revival of terminated proceeding based on Patent Owner's "unintentional" delay and acceptance of late paperYes -- 1.137(b)No

For jurisdiction to be transferred to the Office of Patent Legal AdministrationNoNo

Suspend inter partes reexam for "good cause" under 35 USC 314(c)Yes -- 1.182Yes

Terminated inter partes reexam based on estoppels under 35 USC 317(b)Yes -- 1.182Yes

Proposed Changes Specific to ex parte reexaminations:

1. “Make permanent the pilot that allows the patent owner to optionally waive the patent owner’s statement.” The notice indicates that only about 10% of patent owner’s elect to file a statement under 35 U.S.C. 304 following an order for ex parte reexamination, the USPTO launched a pilot to allow patent owners to waive this statement altogether.

2. “Where the Patent Owner does not waive the statement, the order granting reexamination will include a provisional FAOM which may be made final in the next action.”

Proposed Changes Specific to inter partes reexaminations:

1. “Third Part Requester may dispute the examiner designation that a rejection is “representative” of other rejections in the group.”

2. “Final Office Action closes prosecution and triggers appeal rights.”

3. “Third Part Requester’s appellant brief is limited to appealing an examiner’s decision that a claim is patentable; additional bases to cancel a rejected claim can only be argued in a respondent brief following patent owner’s appellant brief.”

A detailed description of each proposed change can be found in the USPTO notice listed above. Additionally, there is a list of thirteen questions on page 22860 in which the USPTO is seeking input.

The public meeting is scheduled to be held June 1, 2011 at 1:30 (EST). Persons interested in attending the meeting must register by 5 p.m. EST, on May 25, 2011. The meeting will be held at the USPTO, in the South Auditorium of Madison West 600 Dulany Street, Alexandria, Virginia. Written comments should be e-mailed to reexamimporovementcomments@uspto.gov. Comments may be submitted via mail to: Mail Stop Comments-Patents, Commissioner of Patents, P. O. Box 1450, Alexandria, VA 22313-1450, attention of Kenneth M. Schor.

Written comments will be available for public inspection at the Office of Commissioner for Patents located in Madison East, Tenth Floor 600 Dulany Street, Alexandria, Virginia and will also be available via the USPTO Internet Web site address: http://www.uspto.gov.

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