When Inter Partes Patent Reexamination Becomes One Sided

As discussed over the past few months, the USPTO is considering various proposals in an attempt to streamline patent reexamination. The proposals of the speakers at the June 1 public meeting, as well as the webcast, are found (here).

Throughout the month of June, I have explained my own proposals to accelerate/improve patent reexamination. Most recently, I explained an alternative that the USPTO might consider to encourage Patentee cooperation with the Pilot Program to Waive a Patent Owner Statement in Ex Parte Patent Reexamination.

Earlier this month, I explained the presentation I gave at the USPTO public meeting of  June 1st for accelerating petition processing. As most practitioners realize there is a petition crisis at the USPTO that is a direct result of the increased use of inter partes patent reexamination. In my previous proposal on this topic I explained that certain, procedural disputes are commonly petitioned in inter partes patent reexamination. For example, petitions relating to  page limits, petitions to strike filings, etc. The Office would be best served disposing of these petitions by involving an ombudsman that is available by telephone, akin to interference paralegals.

In addition to processing such seemingly routine petitions in a different manner, the Office should also consider eliminating situations that generate such petitions as a matter of course. For example, it is quite common for a Requester of an ongoing inter partes patent reexamination to stop participating in the proceeding. In such situations, typically, the Requester settles their dispute with the Patent Holder in a parallel litigation. Upon settlement, the Requester agrees to discontinue their participation in the patent reexamination, often times filing a statement memorializing this agreement in the reexamination. Thereafter, the Patentee will petition the Office to waive the requirements of 37 C.F.R. § 1.955 to allow for an interview in the reexamination. The petition is necessary as, even though the reexamination is now ex parte to all intents and purposes, the Office maintains the proceeding as if the requester were still participating.

As long as the petition for interview presents a detailed agenda on how the proposed interview will accelerate prosecution, it is granted. However a second petition is required for any subsequent meeting. Moreover, even if all claims are later confirmed/allowed a Right of Appeal Notice (RAN) is still issued. This makes no sense as the Patentee is not appealing a favorable conclusion, and there is no Requester involved in the proceeding any longer to dispute such a result. As can be appreciated, these practices are unnecessary, help drive unnecessary petition filings, and ultimately aggravate inter partes patent reexamination pendency.

A more sensible solution would allow the filing of a statement that waives the Requesters rights to further participation, upon which, the Office would allow interviews as a matter of right. Further, the filing of such a statement would accelerate appeal processing by avoiding RAN and cross appeal docketing practices.

As a reminder, written comments to the current patent reexamination streamlining proposals are due to the USPTO next week, June 29th.