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.