Patent reexamination has evolved into a highly effective risk management tool for organizations faced with potential patent infringement liability. This post grant review mechanism of the USPTO is increasingly employed not only as a true alternative to costly patent litigation as originally intended by Congress, but also as a parallel track procedure offering strategic advantage relative to a concurrent litigation.
Still, some organizations outside the U.S., most notably the Japanese, appear to be operating in accordance with outdated perceptions as to the strategic value and efficacy of modern day patent reexamination.
Illustrated below is a comparison of reexamination request rates (non-anonymous) for U.S. vs. Japanese filers. To the untrained eye, the relative filing rates seem entirely logical for a U.S. based, intellectual property right. Yet, when considering that the vast majority of the top patent filers in the U.S. are in fact Japanese companies, domestic dominance in patent reexamination is especially surprising.
Clearly, U.S. requests for patent reexamination significantly outpace Japanese requests (including both ex parte and inter partes requests). Indeed, when the chart above is filtered to exclude those Requesters initiating patent reexamination of their own patents (not uncommon for Japanese filers), the contrast between the two filing rates is all the more stark. Certainly, some anonymous reexamination requests (ex parte) may be originated by Japanese filers, yet, this statistic would not be at all significant in my experience.
So, why aren’t the Japanese embracing the offensive use of patent reexamination to the extent of U.S. companies?
It may be that past prejudices still linger in Japan as to the effectiveness and reliability of patent reexamination at the USPTO. Prior to changes in the law of patent reexamination that created inter partes reexamination in 1999, (AIPA of 2002, In re Swanson), and changes to the handling of reexaminations internal to the USPTO (Central Reexamination Unit), patent reexamination was universally viewed as a fruitless exercise.
In addition to the poor track record of past patent reexamination practices at the PTO, historically, Japanese companies are more likely to settle disagreements with competitors by cross-license rather than by overt, offensive actions. Indeed, due to the sheer size of their patent portfolios, Japanese companies are unlikely to have had much negative experience being attacked in patent reexamination by competitors (see below). Thus, there appears to be a general unfamiliarity with the offensive value of patent reexamination.
Still, Japanese companies are also targeted by “patent trolls” on a regular basis. In this respect, the misfortunes of Japanese companies are no different than U.S. companies. As a result, Japanese companies are just as likely to benefit from some of the strategic opportunities offensive patent reexamination has to offer.
Perhaps once the changed landscape of patent reexamination in the U.S is widely appreciated in Japan, the Japanese filing rate will more closely track the U.S. filing rate.