New Ex Parte Patent Reexamination Pilot Program a Tough
Back in August, I reported
on a new
USPTO pilot program designed to decrease pendency in ex parte patent
reexamination by seeking waiver of the right to file a Patent Owner
According to 2009 PTO
statistics, Patent Owners filed statements in 10% of ex
parte reexaminations. This is because filing of such a statement
gives a Third Party a one-time rebuttal opportunity. Otherwise, Third
Party participation is precluded by statute in ex parte reexamination. Therefore,
by simply waiting for the Office to issue the first action, the Third Party is
effectively silenced for the duration of the proceeding.
The new pilot program seeks
to avoid the period of time the USPTO must wait to receive a Patent Owner
Statement by requesting an early waiver of this right from the Patent Owner. Assuming
the Patent Owner cooperates upon receiving notice of the initial request
filing, the USPTO can reduce pendency by avoiding this front loaded, down
Since the program has been in
operation for a few weeks now, it seemed like a good time to review
the early results, and caution certain Patent Owners on how this
seemingly trivial question of procedure may come back to haunt them.
Based upon the preliminary data
shown in PAIR, for those requests filed since August 5th, Patent Owners are
currently deciding against waiver by about a 3-1 margin. (click
Of course, the data set is
rather small at this point. Nevertheless, not surprisingly, the
preliminary data indicates that few Patent Owner's given the chance, will
opt for a more streamlined proceeding.
This chart does not account for 6
cases in which the USPTO was unable to contact the Patent Holder. (As I pointed
out in my earlier post, it is not uncommon for reexamination counsel to be
different from the counsel listed on the face of a patent).
It is still too early to track
the correlation between the refusal to waive the right to file, and ACTUAL
statement filings. However, based on my experience, I would guess
that most of those refusing to waive their right have no intention on
exercising it. Only one case of the 15 declining waiver was a patent owner
requested reexamination, thus, I would be surprised if more than one statement
was ultimately filed of these 15 cases. Yet, for those Patent Holders
conducting a concurrent litigation, refusing to accept the waiver followed
by an non-filing may have collateral consequences.
It is just a matter of
time before a refusal to accept the USPTOs waiver offer, followed
up by the failure to file a statement is used against a Patent Holder
in a motion to stay a parallel litigation. Third Parties seeking to stay the
case would argue that the Patent Owner was asked by the USPTO to cooperate for
the purposes of accelerating the proceeding by several months-but expressly
declined, deliberately seeking delay as evidenced by the failure to
ultimately file a statement.
While Patent Owner's always
had a right to waive the statement by simply filing a paper notifying the
office (MPEP 2249), clearly this option was rarely exercised by evidence of the
new telephone election procedure. Likewise, the interview summary in the record
memorializing a lack of cooperation by the Patent Owner may be a bit more
damaging in front of a judge....I guess we'll find out soon enough.
I'll follow up on the correlation
between non-waiver and actual filing in a month or two.
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