Patents Post-Grant: USPTO Shaves Months Off Patent Reexamination Pendency

Patents Post-Grant: USPTO Shaves Months Off Patent Reexamination Pendency

Reexamination Certificate Printing Process Streamlined

A patent reexamination proceeding is terminated by the USPTO upon issuance of a Notice of Intent to issue a Reexamination Certificate (NIRC). Thereafter, the proceeding formally concludes with the issuance of the actual reexamination certificate. The certificate functions to communicate the results of the proceeding to the public (claim changes/cancellations, etc.)

Historically, upon issuance of the NIRC the USPTO would hand the file off to a government printing contractor located in Pennsylvania for printing of the reexamination certificate. Once in the hands of the printing contractor, the file would be reviewed to ensure completeness (and was often times shuffled back to the agency for administrative oversights, largely related to IDS filings). Thus, from the time a NIRC is issued, it is not uncommon for a certificate print cycle to span 4-6 months in duration. This delay was more than just a minor inconvenience for Patentees as amended/new claims do not legally exist until printed. In other words, potential infringement damages for such amended/new claims are lost to bureaucratic inefficiency even though the substantive aspect of the reexamination proceeding is effectively finished.

The good news is that the USPTO has now addressed the printing delay and has drastically reduced the duration of the print cycle in recent weeks. During the December 2010 to January 2011 time frame, the USPTO issued 78 reexamination certificates. For these certificates the average printing cycle spanned 120 days. Since that time, the USPTO made changes to the volume of data that is to be printed on a certificate. As a result of the changes implemented this past November the printing cycle has been reduced to 47 days. That is to say, from November 2011 to December 2011 the USPTO issued 70 certificates in an average time of 47 days, including one which issued in only 33 days.

The improvement is charted below (Click to Enlarge):

The USPTO Office of Data Management (ODM) has provided me with the following data:

RX-NIRC Dates of December 2010 through January 7, 2011 (duration 6 weeks):
Total volume - 78
Issued on average in 120.6 days
Issue dates ranged from February 22nd to May 24th
40% of these reexams were well over 120 days

RX-NIRC Dates of September 2011 and October 2011 (duration 6 weeks):
Total volume - 102
Issued on average in 52.9 days
Issue dates ranged from November 1st to December 6th
Less than 8% of these reexams were over 100 days.

RX-NIRC Dates of November 2011 and December 2011 (duration 6 weeks):
Total volume - 70
Issued on average in 47.9 days
Issue dates ranged from December 13th to January 31st
0 reexams were over 100 days
1 reexam issued in 33 days

The time reduction was achieved by reducing the amount of data printed on the reexamination certificate. No longer will the certificate list the significant volumes of prior art submitted to the Office during patent reexamination proceedings, instead, this information will now reside in PAIR as a new "tab" of the interface.

The re-engineering of the print cycle is a much welcomed change.

Going forward, it is expected that the USPTO will continue efforts to streamline patent reexamination proceedings. For example, during the recent PLI 2012 Post Grant Patent Practice Program the director of the Central Reexamination Unit (CRU) commented that the previous streamline initiatives were placed on the back burner due to the monumental effort of the Agency to implement the various provisions of the America Invents Act. However, now that the bulk of the AIA rule making effort is complete, the Office expects to get back to their previously proposed streamline initiatives.

Stay tuned!

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