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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

USPTO Warns Practitioners on Abusive Filings in Patent Reexamination

Posted On: Jan. 14, 2011   By: Scott A. McKeown
warningPetition Filings Soar in Patent Reexamination

This past Monday, I co-chaired PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. As previously noted here, Mr. Kenneth Schor, Senior Legal Adviser of the USPTO’s Office of Patent Legal Administration (OPLA) participated and presented a very informative lecture on proper petition practice in patent reexamination.

Mr. Schor made several points of great interest to all post grant practitioners namely:

1) It is improper to oppose many petitions in inter partes reexaminations or provide sur-replies to properly opposed petitions;

2) Improper petitions will be referred to the Office of Enrollment & Discipline (OED), and

3) Abusive petition practices are believed to be aggravating a growing petition inventory.

Below is a chart taken directly from Mr. Schor’s slides demonstrating the growing petition crisis:

petitions

<—Click to Enlarge

As clearly depicted in the chart, petition inventory is exploding. As inter partes patent reexamination filings begin to approach ex parte patent reexamination filing rates, the petition problem is expected to continue to tax USPTO resources.

Mr. Schor emphasized that petitions that oppose discretionary decisions of the Office, such as whether or not to grant an extension of time to a Patentee, are wholly improper. I encourage practitioners to register for the next live presentation of this material set for February 4th in New York City, webcast available thereafter.

7 Responses to “USPTO Warns Practitioners on Abusive Filings in Patent Reexamination”

  1. Right says:

    I refer Mr. Schor to the text of 37 CFR 1.181-183. I don’t see anything in there about certain kinds of petitions being “improper.” If the USPTO wants to make a rule like that, then it should actually make an administrative rule using the proper notice and comment process. Anything less is arbitrary and capricious and an abuse of their power.

  2. Obviously, I don’t speak for the Office. However, Mr. Schor would very likely refer you to MPEP 2667(B)4 (last paragraph).
    To the extent my posting is unclear, the improper petitions discussed are 3rd party oppositon to discretionary matters, and never-ending sur-replies, not initial filings under any one rule.

  3. Right says:

    I acknowledge your point about endless filings, but the Office has been at pains for some years now to emphasize that the MPEP is not law and cannot be relied upon as law. And oppositions to almost any petition filing were, in the first years of IPR practice, accepted and considered by the Office in IPR matters. My point is, that if the Office wants to alter its interpretation of administrative rules to put certain kinds of filings out of bounds, and especially if it wants to threaten practitioners with discipline based on that interpretation, then it ought to use the proper legal process to establish a clear rule. As 35 USC 2(b)(2)(B) makes clear, the proper process is notice and comment rulemaking under the APA, not through the back-door via revisions to the MPEP, individual petition decisions (which are not said to have any precedential value anyway), or announcements at seminars.

  4. Recent petition decisions have pointed out that it is not the rules or the MPEP that preclude such filings, but the lack of statutory authorization to consider them in the first instance. See my earlier discussion of such a decision —–>http://www.patentspostgrant.com/lang/en/2010/07/third-party-opposition-petitions-in-inter-partes-reexamination

    In any event, I would agree that the Office may want to consider a more formal policy pronouncement.

  5. Right says:

    Thank you for the link to your earlier commentary on the Office’s position on some of these petitions. I would offer this: if 35 USC 314(b)(2) is interpreted as precluding third party oppositions on the basis that they are not “written comments addressing issues raised by the action of the Office or patent owner’s response thereto,” then why aren’t ALL third party petitions precluded by statute? There is nothing I see in 314 that would seem to admit of a selective interpretation in which some petitions are allowed and others are not. I would ask, what is the statutory authority for 37 CFR 1.927 for example, if third parties are precluded by statute from filing anything other than the original request and single opportunity comments on office actions and patent owner responses? It seems to me that 37 CFR 1.927 must be ultra vires if that interpretation is correct, as must any consideration of a third party petition on some other question.

    These are essentially rhetorical questions: I realize you do not speak for the Office so I don’t mean to suggest that you need to defend the Office’s position. I think, however, these are questions the Office should be expected to answer. And I suspect that they will eventually have to answer them in the courts in the fullness of time if they continue to employ such reasoning.

  6. Well, you could always ask Mr. Schor yourself at the New York program :) Actually, I will file your question away to pose to him in New York, if it does not come up otherwise.

    But, I will take a stab at it here anyway. The Office makes a distinction between petitions directed toward matters of discretion (e.g., extensions of time) and petitions relating to taking away the right of the opposing party, or a petition relating to an action taken by the Office. This last category is generally deemed as being related to the merits of the proceeding.

    An example of taking a right away would be a petition to vacate a filing date of the reexam. In that case a 3P can oppose the petition and explain why their filing satisfied all requirements. Likewise, if a patentee petitions to withdraw an ACP as premature, the 3P can explain why the Office decision is correct.

    As for the basis of the distinction in a rule or statute, I believe the Office would explain they are entitled to deference when interpreting their own rules under administrative law principles. I would agree that there is no specific language on point.

  7. patent litigation says:

    I’m glad that someone is drawing attention to this issue. Abuse of reexamination, with harassing purpose or result, is indeed a growing problem in patent litigation (and one that could well be aggravated if the SCOTUS does rule in favor of Microsoft over i4i, thereby weakening the traditional presumption of patent validity). You are also correct, however, that such abuse unjustifiably taxes the resources not only of patentees, but also of the USPTO.