New Ex Parte Patent Reexamination Pilot Program a Tough Sell

Back in August, I reported on a new USPTO pilot program designed to decrease pendency in ex parte patent reexamination by seeking waiver of the right to file a Patent Owner Statement.

According to 2009 PTO statistics, Patent Owners filed statements in 10% of ex parte reexaminations. This is because filing of such a statement gives a Third Party a one-time rebuttal opportunity. Otherwise, Third Party participation is precluded by statute in ex parte reexamination. Therefore, by simply waiting for the Office to issue the first action, the Third Party is effectively silenced for the duration of the proceeding.

The new pilot program seeks to avoid the period of time the USPTO must wait to receive a Patent Owner Statement by requesting an early waiver of this right from the Patent Owner. Assuming the Patent Owner cooperates upon receiving notice of the initial request filing, the USPTO can reduce pendency by avoiding this front loaded, down time.

Since the program has been in operation for a few weeks now, it seemed like a good time to review the early results, and caution certain Patent Owners on how this seemingly trivial question of procedure may come back to haunt them. 

Based upon the preliminary data shown in PAIR, for those requests filed since August 5th, Patent Owners are currently deciding against waiver by about a 3-1 margin. (click to enlarge)


Of course, the data set is rather small at this point. Nevertheless, not surprisingly, the preliminary data indicates that few Patent Owner’s given the chance, will opt for a more streamlined proceeding.

This chart does not account for 6 cases in which the USPTO was unable to contact the Patent Holder. (As I pointed out in my earlier post, it is not uncommon for reexamination counsel to be different from the counsel listed on the face of a patent).

It is still too early to track the correlation between the refusal to waive the right to file, and ACTUAL statement filings. However, based on my experience, I would guess that most of those refusing to waive their right have no intention on exercising it. Only one case of the 15 declining waiver was a patent owner requested reexamination, thus, I would be surprised if more than one statement was ultimately filed of these 15 cases. Yet, for those Patent Holders conducting a concurrent litigation, refusing to accept the waiver followed by an non-filing may have collateral consequences.

It is just a matter of time before a refusal to accept the USPTOs waiver offer, followed up by the failure to file a statement is used against a Patent Holder in a motion to stay a parallel litigation. Third Parties seeking to stay the case would argue that the Patent Owner was asked by the USPTO to cooperate for the purposes of accelerating the proceeding by several months—but expressly declined, deliberately seeking delay as evidenced by the failure to ultimately file a statement. The argument would continue that this is evidence of the strength of the rejections (fear on the part of the Patent Owner) and, that such gamesmanship and circumstantial evidence of the likelihood of success, weigh in favor of staying the case.

While Patent Owner’s always had a right to waive the statement by simply filing a paper notifying the office (MPEP 2249), clearly this option was rarely exercised by evidence of the new telephone election procedure. Likewise, the interview summary in the record memorializing a lack of cooperation by the Patent Owner may be a bit more damaging in front of a judge….I guess we’ll find out soon enough.

I’ll follow up on the correlation between non-waiver and actual filing in a month or two.