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
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