Patent Reexamination Pilot Program Update

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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