This is part three of a three part a series of guest postings by Robert J. Spar, former Director of the Office of Patent Legal Administration. Bob will be one of featured faculty at PLI’s “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010” conference to be held in San Francisco, CA on January 11-12, 2010; New York, NY, on February 11-12, 2010 and Chicago, IL on March 11-12, 2010. OPLA has been instrumental in designing and implementing reexamination process improvements. Some examples of recent OPLA driven initiatives/changes include: 1. Request for XP or IP reexamination must meet all applicable statutory requirements to get a filing date. Thus, the patent owner, and the Office, are better able to evaluate the request to see if a substantial new question of patentability (an “SNQ”) has been raised when a filing date is given; 2. If reexamination is requested for less than all the patent claims, the USPTO determination on the request will generally review, on the merits, only the claims for which reexamination was requested. Further, during the examination stage, the Office will generally only examine those claims for which reexamination was requested, and a SNQ was raised; 3. Extensions of time were made more difficult to justify; and 4. Supplemental responses were prohibited without a showing of sufficient cause why entry should be permitted. These changes reduce the number of issues that examiners have to consider while performing the determination of reexamination requests, and while performing the examination in reexamination proceedings, and therefore enable more thorough, reliable and timely action taking. They also limit patent owners from taking actions to delay the reexamination process. It is clear that these changes will meaningfully help to reduce overall pendency of the reexamination process, which the Office is under a lot of pressure to do. I know that the CRU and OPLA together are considering other changes to further improve at least the timeliness of the reexamination process and I would not be surprised to see other such changes in the future. The CRU was established to provide thorough, consistent, reliable and timely evaluations of XP and IP reexamination proceedings. It is thought that the recent increases in the filings of XP and IP reexamination requests is due, at least in part, to an improved Office performance in handling reexamination proceedings by the CRU, which could not have been achieved without the strong support and assistance of the legal advisors in OPLA.
