Yesterday, the USPTO announced a pilot program, effective immediately, aimed at reducing the pendency of ex parte patent reexamination. The program entitled “Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte reexamination Proceedings” will be triggered once a new ex parte reexamination request is accorded an initial filing date.
In devising the pilot program, the USPTO has explained that only 10% of Patent Holder’s take advantage of the opportunity to submit a Patent Owner statement. (Inter Partes Reexamination does not provide for Patent Owner’s Statements). The reason behind the lack of enthusiasm in filing Patent Owner statements is that the filing of such a statement entitles the Third Party to a rebuttal. Outside of the filing of such a statement, Third Party participation in ex parte reexamination is precluded by statute. Therefore, simply waiting for the Office to issue the first action effectively silences the Third Party for the remainder of the proceeding.
The Federal Register Notice explains that the new pilot program will seek to reduce overall pendency by cutting out this front loaded, dead time found in 90% of ex parte reexaminations. [T]he USPTO will contact the patent owner and request the optional waiver of the right to file a patent owner’s statement after the proceeding has been granted a filing date and before the examiner begins his or her review. This will enable the USPTO in suitable cases to issue the first Office action on the merits (including an NIRC) together with or soon after the order for reexamination, and thereby reduce the pendency of the proceeding by about three to five months.
This pilot program is a very positive step, and makes perfect procedural sense. The USPTO is to be commended for attempting to tackle the pendency issue. Yet, I expect that few Patent Holders, given the chance, will take advantage of the program.
Currently, a significant portion of the patents undergoing reexamination at the USPTO are involved in concurrent litigation. This is due, in part, to a goal of Third Party Requesters (i.e., defendants) to force a stay the litigation pending reexamination. In such cases, longer overall pendency, time to first action, and time to final action favors the Patent Holder’s argument against staying the litigation.
On the other hand, if the stay is granted, speed becomes a primary concern of the Patent Holder. Yet, a litigation is almost never stayed based upon the mere filing of a reexamination request (i.e., when the PTO makes the phone call seeking waiver). Thus, it seems unlikely to me that this program will be embraced, at least for those patents subject to concurrent litigation.
Still, not all ex parte reexaminations are involved in litigation. In those instances, the pilot program could make sense. Yet, as extensions of time are not provided as a matter of right in patent reexamination, Patent Holders typically prefer to utilize the time between initial determination and first action to consider their response strategy. Perhaps the Office can tweak the program to horse trade the 3-5 month delay saved by the waiver in exchange for a one-month extensions of time to be used at the discretion of the Patent Holder? Seems to me that special dispatch would still be provided if there is an overall time savings.
Another factor that may complicate this program is that patents pursued in ex parte reexamination tend to be older (i.e., not eligible for inter partes reexamination). In such patents, it is rare that the same law firm is retained to serve as reexamination counsel. So, it may be that early communication with the Patent Holder is not as straightforward as one would expect.
The response to this program will be interesting….stay tuned.