Much attention has been given to the contested proceedings of the newly formed Patent Trial & Appeal Board (PTAB) since enactment of the America Invents Act (AIA) last fall. Starting in September of 2012, these new patentability trials (Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP) and Inter Partes Review (IPR)) will become available, and must conclude by statute within 12-18 months of initiation. The pendency of the new trial proceedings is a significant improvement relative to existing patent reexamination and is expected to be a significant driver behind filings concurrent with litigation.
As a result of the new options for contested proceedings, the law eliminates inter partes patent reexamination. So, going forward, the Central Reexamination Unit (CRU) will lose a significant, resource intensive stream of work. While it is true that the CRU will remain responsible for legacy inter partes reexamination filings, the 100+ examiners will necessarily have extra time on their hands post-AIA.
Absent a replacement stream of work, the remaining stream, ex parte patent reexamination filings, may benefit from the newly available bandwidth.
While it is true that the CRU will be responsible for a new stream of work, Supplemental Examination (SE), the volume of this work will be negligible. Simply stated, post-Therasense, many inequitable conduct defenses are falling at the summary judgement stage. Likewise, the filing of an SE will only serve to create further inequitable conduct accusations. Therasense has largely eliminated the need for this proceeding outside of the most limited of circumstances.
So, post-AIA, the CRU will eventually be left with a docket of ex parte reexamination cases. Absent a reduction in head count at the CRU, it is expected that the pendency of these proceedings will decrease in a fairly significant manner as examiners increasingly turn to these cases. This increase in speed may also be helped by a 10-20% decrease in filings of ex parte reexamination requests resulting from the fairly significant fee increases coming in the months ahead.
Another potentially significant wild card is the Lingamfelter v. Kappos case now before the CAFC. If the CAFC should decide that third parties may not file declaration evidence during the prosecution of inter partes patent reexaminations, the last bubble of inter partes patent reexamination filings expected prior to September 16th could shrink considerably.
In the years ahead ex parte patent reexamination may become significantly faster than it is today. As such, rather than venture into the relatively higher cost realm of PTAB proceedings, challengers not under the pressure of a co-pending litigation may first take a shot at one or more serially filed, ex parte patent reexamination challenges.