Requirements, Realistic Timetables, Statistics

A realistic timetable for an reexamination is a crucial data point for third-party requesters, patent owners and judges as they navigate the parallel universe.For these reasons, we provide below some insight into external and internal PTO and CRU procedures, as well as the latest information regarding reexamination pendency.Upon filing, reexamination requests first undergo review by the CRU staff to ensure compliance with the rules.For instance, the staff will ensure that each reference cited by requester is used to support at least one SNQ.Further, the staff recently began ensuring that the requester properly and affirmatively demonstrated that each SNQ is non-cumulative of the art previously considered during original prosecution or previous reexaminations.If the reexamination request passes muster under the CRU staff, a notice of the request is made public in the Official Gazette.

When a request is deemed to satisfy all the requirements of the ex parte or inter partes rules, the filing date becomes the reexamination filing date [35 U.S.C §§ 510 (ex parte reexaminations) and 919 (inter partes reexaminations)].Just because the notice of request is published in the Official Gazette does not necessarily mean that the reexamination request was satisfactory.Roughly 10% of requests are later vacated by the examining panel for informalities.While this number has fallen from roughly 15% in previous years, it’s noted a recent uptick in denial rates based on the requester’s failure to adequately prove that the proposed SNQ is not cumulative to the art considered during original prosecution.

Once a satisfactory request has been made, the CRU has a three month deadline to issue a decision on the request based on whether a substantial new question of patentability (“SNQ”) has been raised in the request.For ex parte requests, the grant starts a two month window in which the patent owner may respond to the request. In that response, the patent owner may amend claims or argue that the claims under reexamination are patentable.If the patent owner elects to file a statement, then the third party requester may reply. This the only opportunity a third party requester gets to participate in an ex parte reexamination proceeding.Most reexamination practitioners advise against filing a patent owner’s response for this reason.For inter partes requests, CRU procedures suggest that a first office action on the merits accompany the grant, but that is not required.Overall, the CRU has established an internal goal to issue a final office action or an Action Closing Prosecution (“ACP”) within two years of the filing date of a request for reexamination.

Once prosecution closes, an appeal to the BPAI is available to the patent owner in ex parte reexamination and to both the patent owner and the third party requester in inter partes reexamination.After hearing an appeal, the BPAI has a stated goal of then rendering a reexamination decision in six months.The apparent BPAI bottleneck notwithstanding, as yet there are no reliable statistics on the pendency of reexaminations appealed to the BPAI.