Added Rebuttal Opportunity of Limited Value to Patentees
When faced with a third party request for either ex parte patent (EXP) reexamination or inter partes patent (IPX) reexamination, a Patentee must sit helplessly by and await the determination of the USPTO to grant or deny the request. That is to say, the Patentee may not file any argumentation prior to the determination of the USPTO to institute a reexamination proceeding. For this reason, as well as the relatively low Substantial New Question (SNQ) threshold set for patent reexaminations (although no longer applicable to IPX), the grant rates for both EXP and IPX have hovered around 93%.
In order to address the absence of input from Patentees, and perhaps to a lesser extent the high grant rate, the new post grant proceedings of the America Invents Act (AIA) require higher thresholds (reasonable likelihood standard for Inter Partes Review (IPR) and more likely that not standard for Post Grant Review (PGR)). In addition, prior to ordering a trial in either of the new proceedings, Patentees will now have the option of submitting a preliminary response.
Yet, while on paper the filing of a preliminary response may seem to foster a more balanced system, in practice, such filings may be very rare.
As shown in the exemplary timeline below, an IPR/PGR proceeding kicks off with a third party petition filing (9/17/12 in the timeline). (Click to Enlarge)
Once filed, the Patentee is given two months to respond. In that time, the Patentee must receive notice of the proceeding, perhaps delayed by mail and communication delays of a previous patent counsel (listed on the face of the patent), then seek qualified post grant counsel. In my experience, this process can burn up to 3-4 weeks of valuable time.
Thereafter, the Patentee must assemble their response (in the remaining month’s time). Keep in mind that the third party has likely spent 4-6 months or longer preparing their petition, and included declarations of experts supporting their invalidity positions. On the other hand, the Patentee is likely responding within roughly 4-6 weeks time (no extensions are contemplated in the proposed rules).
Perhaps more disturbingly, a preliminary response may not include new testimonial evidence (42.107). Thus, attorney argument of the Patentee is weighed against the declaration evidence of the challenger. It would seem to me that the “reasonable likelihood of success” in this system is significantly skewed in favor of the third party.
Additionally, should the Patentee scramble to file a preliminary response and fail to persuade the Patent Trial & Appeal Board (PTAB) to deny the petition, once instituted, the third party may be permitted to file a supplemental response (42.123). If not properly policed, such supplemental information could allow a third party to further refine their positions based on the preliminary response of the Patentee.
A failed preliminary response will likely provide the third party with a 3-4 month preview of the Patentee’s positions for very little value. For example, the USPTO predicts in their proposed rule package for IPR that the grant rate will be 90% (as compared to the current 93% grant rate of IPX).
Absent a clear cut rebuttal such as the applied references of a petition not qualifying as prior art, and in view of the significant shortcomings of the proposed preliminary response procedure, it seems unlikely that a Patentee would choose to avail themselves of such an otherwise well intentioned mechanism.