Patents Post Grant Blog

Yesterday, the USPTO announced a pilot program, effective immediately, aimed at reducing the pendency of ex parte patent reexamination. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte reexamination Proceedings” will be triggered once a new ex parte reexamination request is accorded an initial filing date.

In devising the pilot program, the USPTO has explained that only 10% of Patent Holder’s take advantage of the opportunity to submit a Patent Owner statement. (Inter Partes Reexamination does not provide for Patent Owner’s Statements). The reason behind the lack of enthusiasm in filing Patent Owner statements is that the filing of such a statement entitles the Third Party to a rebuttal. Outside of the filing of such a statement, Third Party participation in ex parte reexamination is precluded by statute. Therefore, simply waiting for the Office to issue the first action effectively silences the Third Party for the remainder of the proceeding.

The Federal Register Notice explains that the new pilot program will seek to reduce overall pendency by cutting out this front loaded, dead time found in 90% of ex parte reexaminations. [T]he USPTO will contact the patent owner and request the optional waiver of the right to file a patent owner’s statement after the proceeding has been granted a filing date and before the examiner begins his or her review. This will enable the USPTO in suitable cases to issue the first Office action on the merits (including an NIRC) together with or soon after the order for reexamination, and thereby reduce the pendency of the proceeding by about three to five months.

This pilot program is a very positive step, and makes perfect procedural sense. The USPTO is to be commended for attempting to tackle the pendency issue. Yet, I expect that few Patent Holders, given the chance, will take advantage of the program. Read the rest of this entry »