Patent Reexamination Pilot Program Update

Patentees Frustrate USPTO Efforts to Reduce Ex Parte Reexamination Pendency

As discussed in previous posts, in August of 2010 the USPTO announced a pilot program, aimed at reducing the pendency of ex parte patent reexamination by 3-5 months. The program entitled "Pilot Program for Waiver of Patent Owner's Statement in Ex Parte Reexamination Proceedings" is triggered once a new ex parte reexamination request is accorded an initial filing date.

In formulating the program, the USPTO noted that roughly 10% of Patentees file such statements. Thus, by presenting the option to waive the statement, arguably, 90% of filings could be accelerated by 3-5 months. Yet, initial response to the program seemed to indicate that Patentees favored this de facto delay.

Now that a larger number of proceedings have been subject to the program a clearer picture is emerging.

To date, 43 Patentees (31%) have agreed to waive the statement.  This is a far cry from the 90% of Patentees the USPTO would expect to participate based on statement historical filings. Yet, perhaps even this 31% number is skewed. For example, 19 of the 43 waivers correspond to proceedings having a concurrent litigation that was stayed, or subject to a pending motion to stay. Thus, cooperation with the USPTO in these cases was very likely litigation inspired, not for reasons of simple administative efficiency.

To date, 94 Patentees (69%) have reserved the right to file a statement. Of this number, many are still within the period by which a statement can still be provided to the office. However, as shown in the chart below, 27 of those filings have matured beyond the date by which a statement must be filed.

As shown in the above chart, of the 27 patentees that reserved their right to file a statement, only 5 actually followed through and filed a statement. 

Of the 5 "good citizens" above, how many of them were driven by litigation interests? As previosuly discussed, unless a statement is filed, Patentees will be characterized as seeking delay in any concurrent litigation in which patent reexamination pendency is at issue (i.e., motion for stay). As the program continues, I will take a further look at the impact of concurrent litigation with participation in the pilot program.

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