As pointed out earlier this week, the USPTO began accepting petitions for the new post grant trial proceedings of the America Invents Act (AIA) at 12:01AM Sunday morning. As the USPTO approached the midnight kick off for the new filings it was simultaneously closing the books forever on inter partes patent reexamination; but not before receiving a record number of such requests. It appears that well over 200 requests were filed for inter partes patent reexamination, and well over 100 for ex parte patent reexamination were submitted in the week leading up to Sunday. This is equivalent to almost 9-10 months of filings (based on Fiscal Year 2011 statistics) in 5 days!
There are several reasons for the inter partes patent reexamination surge. First Inter Partes Review is not available to late stage litigants (i.e., complaint older than 12 months). Undoubtedly some of last week’s filers (such as those sued 12+ months earlier than 9/16/12) were simply those taking advantage of their final opportunity to challenge an asserted patent in an inter partes fashion. Still others may have been looking for a bargain. IPR requires at least a $27,200 filing fee, whereas inter partes patent reexamination was $8800. The Discovery of IPR, although limited also adds additional expense. Finally, IPR is a much faster proceeding. This speed accelerates certainty but also accelerates estoppel risk. For this reason, especially cautious challengers may have opted for the far slower inter partes patent reexamination outcome.
In addition to the surge in inter partes patent reexamination filings, over 100 ex parte reexamination filings were submitted. The surge in ex parte patent reexamination was entirely related to fees. Last week, the required fee was $2520. This week the fee jumps to $17,750.
What does this mean for the USPTO?
Over 300 reexamination determinations will become due one week before Christmas. (reexamination must be ordered within 90 days of filing by statute). While the Central Reexamination Unit works through the September filing bubble, there will almost certainly be a chilling effect on the the speed at which current reexamination proceedings advance.