USPTO Considers Record Number of Requests for Patent Reexamination
In fiscal year 2011 the USPTO initiated a total of 1133 patent reexamination proceedings (both ex parte and inter partes). The 2011 tally represents an overall increase in filings of about 7% relative to 2010 numbers.
Interestingly, while ex parte filings receded slightly, inter partes filings surged by 33% relative to 2010. In FY 2011 374 requests for inter partes patent reexamination were filed.
USPTO statistics for 2011 are found (here)
Ex parte patent reexamination proceedings are typically disfavored over inter partes reexamination proceedings as being too one-sided, and historically biased in favor of patent holders. Likewise, as patent reexamination is increasingly employed as a litigation tool, it is not surprising that the more robust proceeding is now Read the rest of this entry »
2011 Patent Reexamination Appeal Results (Q1-Q3)
As discussed last week, every quarter, the BPAI releases general statsistics on patent reexamination appeals. As promised, I have now gathered statistics that are specific to the type of reexamination proceeding. (Special thanks to the USPTO for providing me these figures).
Below are statistics from October 1, 2010 through May 20, 2011. Note that Q3 of FY 2011 has not yet closed, so, these statistics to not quite cover all of Q1-Q3. First let’s look at the overall statistics for 2011. Read the rest of this entry »
How do Appellants Fare on Appeal in Patent Reexamination?
Every quarter of the fiscal year, the USPTO releases a statistical analysis of the number patent reexamination filings and concluded proceedings. In addition to this helpful information on new filings and concluded proceedings, the USPTO releases appeal statistics that explain the results of appeals art unit 3900, the Central Reexamination Unit (CRU).
An analysis of the appeal results from the CRU show a slightly higher affirmance rate and lower reversal rate relative to the rest of the examining corps. Below is a chart providing the outcome of all reexamination appeals from 2009 through April 2011. Read the rest of this entry »
How Likely Is It to Recover At least 1 Original Claim?
One of the factors considered by district court judges in deciding whether to stay a case pending patent reexamination is the likelihood that the proceeding will simplify issues for trial. Typically, litigants will cite to published USPTO reexamination statistics in the hopes of persuading the court that simplification will/will not result.
For example, recent ex parte reexamination statistics indicate that all claims are confirmed in 23% of cases, all claims cancelled in 12% of cases, and some claims amended in 65% of cases. As such, defendants will argue that in 77% of cases there are claim changes (cancellation + amendment). On the other hand, plaintiffs will take the other extreme and emphasize the 12% of cases in which all claims are cancelled– reasoning that there is a very low likelihood that the case will be completely disposed of via patent reexamination. However, in deciding whether or not stay a district court litigation pending patent reexamination, perhaps a more helpful statistic to courts would be the % of cases concluding with at least 1 confirmed claim.
Since the USPTO does not provide such statistics, I have compiled them for the last 12 months (Feb. 2010 – Feb. 2011). Read the rest of this entry »
42% of 2007 Cases Remain Stayed
Patent reexamination parallel to a district court/ITC litigation is often initiated in an attempt to stay the more cost prohibitive court proceeding. Court’s will stay the ongoing litigation pending the patent reexamination outcome in the interests of judicial economy.
But, what happens to these cases? Are they ultimately dismissed altogether? Do the majority of these cases resume? Do the answers to these questions vary based upon the type of patent reexamination request?
In 2007, 81 cases were stayed pending patent reexamination. Looking at the status of these cases today, long term results demonstrate a significant advantage for defendants. Read the rest of this entry »
Inter Partes SNQs Outpace Ex Parte 2:1
Looking back on 2010 patent reexamination filings, the mean number of Substantial New Questions of Patentability (SNQs) presented differs based upon the type of reexamination proceeding. For ex parte patent reexamination, the mean value is 8.7 SNQs per request, for inter partes patent reexamination the number is 17.3 SNQs per request. The median values are 6 for ex parte patent reexaminations and 11 for inter partes patent reexamination. Of course, these numbers are unlikely to surprise most practitioners.
For example, ex parte patent reexamination may be requested by a patent owner. In such situations there is certainly little motivation to bury the USPTO in reasoned statements to undermine patentability (IDS filings are another issue altogether). More importantly, requesters of ex parte patent reexamination are not bound by the estoppel provisions of inter partes patent reexamination. Read the rest of this entry »
Marked Increase in Patent Reexamination Filings for Fiscal Year 2010
With September marking the end of fiscal year 2010, the USPTO has released year end statistics for patent reexamination operations. A total of 780 ex parte patent reexamination filings were made in fiscal 2010. This is an 18% increase over 2009 filings figures, and an all time record for such filings. (report here)
Inter partes patent reexamination filings for fiscal 2010 totaled 281. This is a 9% increase over 2009 filings, and also an all time record for such filings. Roughly 70% of these filings are related to a co-pending litigation. (report here)
As to operational statistics of the Central Reexamination Unit (CRU), highlights include a reduction in the delay to a first action on the merits (FAOM). For example, in 2007, the average time from filing of a request for patent reexamination to FAOM was about one year for ex parte patent reexamination. This pendency has decreased to 7 months for 2010. (report here)
For insight into the post grant/litigation strategies driving the year-over-year increase Read the rest of this entry »
(click to enlarge embedded images)
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. Read the rest of this entry »
As detailed in our May 18, 2010 posting, non-compliant requests for patent reexamination have been increasing at the USPTO. As the Office is now more closely scrutinizing the substance and procedural aspects of requests for patent reexamination, a checklist and FAQ were recently provided by the Office to aid practitioners in preparing compliant requests. The checklist was also discussed yesterday in Director Kappos’s Blog.
In addition to the guidance provided by the Office, the following snapshot of recent practice may be instructive:
LEGEND (click to enlarge figures)
1. SNQ: New, non-cumulative technological teaching not explained.
2. SNQ: Lumped together multiple distinct proposed rejections.
3. SNQ: Non-conforming IDS (no IDS, IDS references not used/explained, references used but not in IDS)
4. SNQ: Indefinite or inconsistent claim identification (including use of “at least”)
5. SNQ: Incomplete or improper proposed rejections.
6. SNQ: Otherwise not clear; has not applied every cited document to each claim.
7. Service/Certificate of service missing or inadequate.
8. Copies of references missing or not legible.
9. Contains subject matter not within the scope of reexamination.
10. Miscellaneous (Request not signed, Real party in interest not identified, 37 CFR 1.907 estoppel provisions not certified)
Based upon the past 6 months of data. close to 36% of reexamination requests are initially denied as non-compliant. In the coming weeks, we will analyze the rate at which requests for patent reexamination are being denied.
In addition to the above noted PTO FAQ, our previous posts on effective requests for patent reexamination may be found below.
Effectively Presenting a Request for Patent Reexamination Part II
Effectively Presenting a Request for Patent Reexamination Part I
–E.D. of Texas Defendants Seek to Ride Off Into the Sunset–
The E.D. of Texas is well established as the premiere plaintiff forum for patent holders, speedily deciding patent cases, and finding patents invalid relatively infrequently. Similarly, the emergence of patent reexamination as an effective tool in avoiding litigation costs by staying a concurrent litigation has proved effective in the E.D. of Texas sporadically at best; Judge Ward and Judge Davis in particular very rarely, if at all, stay an action in favor of a pending patent reexamination.
Since In re TS Tech, 551 F.3d 1315 (Fed. Cir. 2008), a motion to transfer to a more convenient venue from a Texas court has become a marginally effective defendant strategy. Now, as a matter of course, defendants will seek transfer of a patent infringement case to a more “convenient” forum. Of course, convenience is rarely a mere issue of geography, but rather a basis for moving the dispute to a less patent friendly forum. In the eyes of defendants, less patent friendly would describe practically any other forum. Yet, as noted in the chart below, infringement cases seeking transfer in 2008-2009[1] increasingly sought California as a destination of “convenience.”
A closer look at the 2008-2009 cases however, may reveal more than just a simple transfer strategy, but a two-step, tactical dance. Read the rest of this entry »
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