Back on September 16, 2012, the America Invents Act (AIA) replaced the old inter partes patent reexamination system with a new proceeding, known as Inter Partes Review (IPR). Since petitions for IPR are not handled by patent examiners, but instead, the judges of the Patent Trial & Appeal Board (PTAB), the USPTO’s Central Reexamination Unit (CRU) has experienced a significant cut to their incoming workflow. This change in workflow, coupled with the fact that requests for ex parte reexamination are also off by roughly 50% of pre-AIA filing rates, has resulted in an apparent benefit for patent challengers.
Ex parte patent reexamination requests are being processed faster.
As shown in the chart below requests for patent reexamination (made in the last 3 months) are being granted in roughly 43 days on average, some as fast as 29 days. As a reminder, the USPTO has 90 days, by statute to grant such requests. Historically, the average time to an Order has been about 60 days. (Click to Enlarge)
The above charts correspond to those reexamination filings made on or after December 16, 2012. This date was chosen to study a steady state of operations at the CRU post-AIA. Keep in mind that leading up into the September 16 change in the law there was a significant bolus of reexamination filings that had to be ordered within 90 days (i.e., prior to 12/16/12)
While it is true that the CRU is also responsible for a new stream of work, Supplemental Examination (SE), the volume of this work has been negligible with fewer than 10 such filings to date. Simply stated, post-Therasense, many inequitable conduct defenses are falling at the summary judgement stage. Thus, Therasense has largely eliminated the need for this proceeding outside of the most limited of circumstances.
Going forward, the CRU will be left with a much smaller docket. Absent a reduction in head count at the CRU, it is expected that the pendency of new proceedings will necessarily decrease. This is because the existing inventory of legacy inter partes reexamination prosecution will soon be exhausted and examiners will increasingly turn to new ex parte patent reexamination filings.
Should patent reexamination pendency drop in a significant manner going forward it may become a more attractive option for real time business disputes.