Improved Speed For Overlooked Post-Grant Patent Options

Once upon a time, patent reexamination was the only mechanism to challenge a U.S. patent at the USPTO.  First introduced as an ex parte proceeding in the 1980s, patent reexamination was expanded to include an inter partes option in 1999.  Thereafter, patent reexamination became a popular adjunct to patent litigation. Yet, increased popularity of patent reexamination led to significant delays and increased pendency. The expanding timelines, among other shortcomings, prevented inter partes patent reexamination from serving as a true alternative to patent litigation. Not until the patentability trial mechanisms of the America Invents Act (AIA) did Congress finally succeed in providing a true alternative to patent litigation at the USPTO

Once the AIA patentability trials were introduced, inter partes patent reexamination was discontinued.  Still ex parte patent reexamination remains an option.  Not surprisingly, reexamination decreased in popularity post-AIA.  The reasons for the decrease in popularity is straightforward.  First, an inter partes AIA challenge option will almost always be preferred over an ex parte option for high-value disputes (where available).  Second, a large number of ex parte reexaminations were pursued, pre-AIA, out of necessity.  That is, older patents were not date-eligible for inter partes reexamination.  Of course, all issued patents are date-eligible for AIA review.  For at least these reasons, the current filing rate of  ex parte reexamination is roughly 50% of the 2008 filing numbers.

The falling numbers for ex parte reexaminations, coupled with the elimination of inter partes patent reexamination has, in limited respects, made ex parte reexamination a more attractive option as compared to 2008.

in 2008, the time from filing of a request for ex parte patent reexamination until receiving a First Action on the Merits (FAOM) was 12 months. Now, the time from filing of a reexamination request to a FAOM is roughly 5 months.  That is, within 5 months of filing a request for ex parte patent reexamination, the USPTO will issue both a determination, and an office action rejecting/allowing the claims.  Similar advances in speed are reported across all aspects of ex parte reexamination processing. The increased speed is a natural consequence of the reduced workload of the Central Reexamination Unit (CRU) (i.e., no more inter partes patent reexaminaiton and a 50% drop in ex parte filings).  

This new found speed, which shaves about a year off of reexamination processing, is helpful to both patentees and potential challengers.

As to patentees, post-AIA, addressing claim over breadth prior to litigation has become critical since almost every patent litigation is now accompanied by a Patent Trial & Appeal Board (PTAB) challenge. The patentability determinations of the PTAB will occur prior to trial in all but the fastest district court venues and the ITC.  Since PTAB determinations, assess patentability and not invalidity, patentees cannot seek refuge in a presumption of validity, or clear and convincing evidentiary standard to save over broad claims. Patentees looking to adjust their claim scope, or diversify claim coverage prior to suit — a clear trend given the current assertion climate— can do so in a patent owner initiated patent reexamination. Given the enhanced speed of post-AIA patent reexamination, if amending, patentees can usually conclude the reexamination proceeding in a few months’ time. This allows the patentee to exit the proceeding quickly, with (theoreteically speaking) an stronger claim set for assertion.

Further options for patentees include Supplemental Examination (SE), which are also processed by the CRU on a similar schedule to ex parte patent reexaminations (although unnecessarily complex due to rules for accompanying information submissions) . A further option is patent reissue, also now assigned to the CRU. While public data on patent reissue is not available, I have also seen marked improvement to the speed at which patent reissue filings are processed.

On the other hand, patent challengers still seek out ex parte reexamination for a variety of strategic purposes the most common of which is to maintain anonymity.  Ex parte patent reexamination is the only patent challenge mechanism that permits anonymity. These challengers will also see results faster, at least on the examination side of the house (appeal processing remains largely unchanged, absent expediting). While patent reexamination will not rival the aggressive timeline of AIA proceedings, it is also free of statutory estoppel risks. For these reasons, in the months ahead, I would expect the filing rate to trend upward.

Finally, the new PTAB rule package is expected to address the management of co-pending PTAB, reissue, SE, and reexamination proceedings. Depending upon these changes, additional strategic uses of patent reissue, SE, and reexamination may emerge in the months ahead.