Inter Partes Patent Reexamination Petition Practice May Back Fire on Unwary Patentees
In inter partes patent
reexamination, a participating third party must submit their written
comment to a patentee response within 30 days. Since the 30 day deadline
is provided by statute, the USPTO has no discretion to extend this
period. (35 U.S.C. § 314). This statutory deadline can be especially
onerous in those reexaminations that are subject to concurrent
litigation as the issues tend to be significantly complex, time
intensive and numerous.
On the other side of the fence, a patentee is typically given a two month
deadline to comment on an action of the USPTO, extendible upon petition
(showing of reasonable diligence toward meeting the current due date).
As can be appreciated, third parties must respond to the same issues in,
at best, half the time provided to the patentee. Indeed, where a
healthy number of new claims are added in a response by the patentee,
the third party would need to develop additional rejections/art for the
new claims. Due to the relative inequities in response periods for
opposing sides of an inter partes patent reexamination, patentees enjoy a significant strategic advantage.
As noted above, a third party cannot extend
the statutory response time. Yet, surprisingly, unwary patentees
indirectly provide this very relief to third parties on a regular basis.
One of the more common petitions in inter partes patent reexamination is a petition for waiver of the page limit requirement. That is to say, submissions in inter partes
patent reexamination are limited to 50 pages of substantive comment.
(37 C.F.R. § 1.943). As it is not uncommon for initial requests for inter partes patent
reexamination to total hundreds of pages, Patentees will often seek
waiver of the page limit in order to respond to all issues. The waiver
of Rule 943 is sought via petition (37 C.F.R. § 1.183).
Of course, at the time of petitioning, the patentee is by definition
submitting a response that exceeds the 50 page limit. In other words,
the "response" as submitted does not comport with the statutory
definition unless, and until, the petition is granted. As recently
demonstrated in 95/001,206 (decision here) such a filing will effectively delay the time for a third party response by several months.
In the '206 case, a patentee response was filed on June 7, 2010 along
with a petition to waive the page limit requirement. The third party
did not file a response by July 7, 2010. The patentee petition was
granted on August 11, 2010. In the petition, the USPTO noted that a
third party response was due 30 days from the date of the petition
decision; thereafter the third party filed their response (some 2 months
after July 7, 2010). Subsequently, the patentee filed a further
petition seeking to strike the third party response as untimely, in the
decision linked above, the USPTO explained:
Certainly, it is not possible to adhere to the page limit requirement in
all cases. However, patentees should consider the impact of filing a
response that exceeds the page limit together with an appropriate
petition. That is to say, the cost of additional pages is effectively an
extension of time that would be otherwise unattainable to the third
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