Interference Model to Control Petition Explosion & Manage Filings

Last Wednesday, the USPTO conducted a public meeting to receive comments on their proposals to streamline patent reexamination. For those that missed the webcast last week, the PTO will be posting the presentations of the various speakers in the near future.

To recap, the meeting was organized into three parts. In the opening session, several speakers explained their belief that the “representative rejection” proposal was inconsistent with aspects of the MPEP. Additional speakers noted that the Office’s reliance upon In re Freeman (CAFC 1994) to support proposals requiring amendments in patent reexamination to be related to patentability (under35 USC § 305)  was misplaced. (arguing that the the oft cited language of Freeman was merely dicta). In the second portion of the program, Judge Robinson of the Federal District of Delaware, and Judge Essex of the ITC provided their perspectives on patent reexamination. In the final portion of the program, petition practice was discussed.

My slides on creating an inter partes patent reexamination pilot program for procedural petitions are found (here). The slides explain that

the reexamination petition crisis at the USPTO is a direct result of the increased use of inter partes patent reexamination. With many such petitions having to do with page limits, improper filings and the like, the Office would be best served disposing of these petitions by involving an ombudsman that is available by telephone, akin to interference paralegals. A later phase of the pilot program would further integrate inter partes patent reexamination as a BPAI proceeding (as may soon be required by the patent reform legislation) by allowing substantive, interview-like hearings.

With regard to the complaints of late mail/service in inter partes patent reexamination, I proposed that this problem would be avoided by requiring web portal filing as is the case in patent interference. As patent interferences have become less common as of late, and may be legislated away in the coming months, it would seem that the Office may have some bandwidth freeing up.

Later this week I will discuss my proposal relating to the Pilot Program for Waiving the Patent Owner Statement. This aspect of the USPTO proposals was not discussed in detail during the meeting.