English
How Long Does Patent Reexamination Really Take?
(click to enlarge)
One of the threshold questions in considering patent reexamination, whether a patent owner, or third party is:
How long will it take?
This question is also the subject of significant debate when litigants in a concurrent district court proceeding argue for/against staying the proceeding. Defendants will often point to the published PTO statistics which identify a 24-28 month pendency to conclusion (NIRC). Conversely, Patentee’s point out that these published number do not account for appeal processing. As can be seen from the chart above, reexaminations that are contested through to appeal, are taking roughly 5 years (ex parte or inter partes). Thus, it is quite disingenuous for defendants that file an inter partes reexamination request to argue that patent reexamination will be completed within the PTO’s published time frame. Certainly, if the Office confirms or allows claims within that published time frame, the defendant is not going to just walk away to resume the litigation, but appeal, likely up to the CAFC. CAFC pendency is not accounted for in the above chart, but likely adds another 8-12 months to a true “conclusion.”
With almost all inter partes reexamination being involved in concurrent litigation as shown below, courts would be wise to catch on to this bit of “creative advocacy.”
There are additional administrative rules which the USPTO examiner can choose to exercise, such as “misfiling” the appeal brief to the BPAI. Whereby the BPAI will reject the examiner brief and return for correction. This allows the examiner “carte blanche” to re-open prosecution of the patent, to site additional and combine prior art patents, for additional rejections, each requiring additional office action responses.
This re-prosecution, can add 1.5 years to the examination and cost 10’s of thousands per office action.
If CAFC is appended to the re exam process, duration can take in the order of 8 years before conclusion.
David,
I have never seen an examiner deliberately misfile an Answer Brief. Surely, the process can be frustrating when prosecution is reopened, still, such is usually a sign that the Patentee is making progress. In my experience an examiner has no reason to create additional work for his/herself.