Petition Filings Soar in Patent Reexamination

This past Monday, I co-chaired PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. As previously noted here, Mr. Kenneth Schor, Senior Legal Adviser of the USPTO’s Office of Patent Legal Administration (OPLA) participated and presented a very informative lecture on proper petition practice in patent reexamination.

Mr. Schor made several points of great interest to all post grant practitioners namely:

1) It is improper to oppose many petitions in inter partes reexaminations or provide sur-replies to properly opposed petitions;

2) Improper petitions will be referred to the Office of Enrollment & Discipline (OED), and

3) Abusive petition practices are believed to be aggravating a growing petition inventory.

Below is a chart taken directly from Mr. Schor’s slides demonstrating the growing petition crisis:


<—Click to Enlarge

As clearly depicted in the chart, petition inventory is exploding. As inter partes patent reexamination filings begin to approach ex parte patent reexamination filing rates, the petition problem is expected to continue to tax USPTO resources.

Mr. Schor emphasized that petitions that oppose discretionary decisions of the Office, such as whether or not to grant an extension of time to a Patentee, are wholly improper. I encourage practitioners to register for the next live presentation of this material set for February 4th in New York City, webcast available thereafter.