Marked Increase in Patent Reexamination Filings for Fiscal Year 2010With September marking the end of fiscal year 2010, the USPTO has released year end statistics for patent reexamination operations. A total of 780 ex parte patent reexamination filings were made in fiscal 2010.  This is an 18% increase over 2009 filings figures, and an all time record for such filings. (report here)Inter partes patent reexamination filings for fiscal 2010 totaled 281. This is a 9% increase over 2009 filings, and also an all time record for such filings. Roughly 70% of these filings are related to a co-pending litigation. (report here)As to operational statistics of the Central Reexamination Unit (CRU), highlights include a reduction in the delay to a first action on the merits (FAOM). For example, in 2007, the average time from filing of a request for patent reexamination to FAOM was about one year for ex parte patent reexamination. This pendency has decreased to 7 months for 2010. (report here)For insight into the post grant/litigation strategies driving the year-over-year increase in patent reexamination filings, check out PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. The program is offered in San Francisco January 10, 2011 and in New York  February 11, 2011. The webcast is available January 10th.I will co-chair both events and speak on the topic of Pre-Trial and Post-Trial Reexamination Strategies Concurrent with Litigation. The Hon. Paul J. Luckern of the International Trade Commission will comment on judicial perspectives of patent reexamination, and my partner Todd Baker will discuss reexamination and reissue practices. A USPTO representative (OPLA invited) will discuss inter partes reexamination petition practice, and corporate speakers will round out this compelling CLE progr

With September marking the end of fiscal year 2010, the USPTO has released year end statistics for patent reexamination operations. A total of 780 ex parte patent reexamination filings were made in fiscal 2010.  This is an 18% increase over 2009 filings figures, and an all time record for such filings. (report here)

Inter partes patent reexamination filings for fiscal 2010 totaled 281. This is a 9% increase over 2009 filings, and also an all time record for such filings. Roughly 70% of these filings are related to a co-pending litigation. (report here)

As to operational statistics of the Central Reexamination Unit (CRU), highlights include a reduction in the delay to a first action on the merits (FAOM). For example, in 2007, the average time from filing of a request for patent reexamination to FAOM was about one year for ex parte patent reexamination. This pendency has decreased to 7 months for 2010. (report here)

For insight into the post grant/litigation strategies driving the year-over-year increase …
Continue Reading Patent Reexamination Filings at All Time High

(click to enlarge embedded images)Patent reexamination has evolved into a highly effective risk management tool for organizations faced with potential patent infringement liability. This post grant review mechanism of the USPTO is increasingly employed not only as a true alternative to costly patent litigation as originally intended by Congress, but also as a parallel track procedure offering strategic advantage relative to a concurrent litigation.Still, some organizations outside the U.S., most notably the Japanese, appear to be operating in accordance with outdated perceptions as to the strategic value and efficacy of modern day patent reexamination. Illustrated below is a comparison of reexamination request rates (non-anonymous) for U.S. vs. Japanese filers. To the untrained eye, the relative filing rates seem entirely logical for a U.S. based, intellectual property right. Yet, when considering that the vast majority of the top patent filers in the U.S. are in fact Japanese companies, domestic dominance in patent reexamination is especially surprising.Clearly, U.S. requests for patent reexamination significantly outpace Japanese requests (including both ex parte and inter partes requests). Indeed, when the chart above is filtered to exclude those Requesters initiating patent reexamination of their own patents (not uncommon for Japanese filers), the contrast between the two filing rates is all the more stark. Certainly, some anonymous reexamination requests (ex parte) may be originated by Japanese filers, yet, this statistic would not be at all significant in my experience.So, why aren’t the Japanese embracing the offensive use of patent reexamination to the extent of U.S. companies?It may be that past prejudices still linger in Japan as to the effectiveness and reliability of patent reexamination at the USPTO. Prior to changes in the law of patent reexamination that created inter partes reexamination in 1999, (AIPA of 2002, In re Swanson), and changes to the handling of reexaminations internal to the USPTO (Central Reexamination Unit), patent reexamination was universally viewed as a fruitless exercise.In addition to the poor track record of past patent reexamination practices at the PTO, historically, Japanese companies are more likely to settle disagreements with competitors by cross-license rather than by overt, offensive actions. Indeed, due to the sheer size of their patent portfolios, Japanese companies are unlikely to have had much negative experience being attacked in patent reexamination by competitors (see below). Thus, there appears to be a general unfamiliarity with the offensive value of patent reexamination.Still, Japanese companies are also targeted by “patent trolls” on a regular basis. In this respect, the misfortunes of Japanese companies are no different than U.S. companies. As a result, Japanese companies are just as likely to benefit from some of the strategic opportunities  offensive patent reexamination has to offer.Perhaps once the changed landscape of patent reexamination in the U.S is widely appreciated in Japan, the Japanese filing rate will more closely track the U.S. filing ra

Patent reexamination has evolved into a highly effective risk management tool for organizations faced with potential patent infringement liability. This post grant review mechanism of the USPTO is increasingly employed not only as a true alternative to costly patent litigation as originally intended by Congress, but also as a parallel track procedure offering strategic advantage relative to a concurrent litigation.

Still, some organizations outside the U.S., most notably the Japanese, appear to be operating in accordance with outdated perceptions as to the strategic value and efficacy of modern day patent reexamination. …
Continue Reading U.S. Based Filers Dominate Patent Reexamination

As detailed in our May 18, 2010 posting, non-compliant requests for patent reexamination have been increasing at the USPTO.  As the Office is now more closely scrutinizing the substance and procedural aspects of requests for patent reexamination, a checklist and FAQ were recently provided by the Office to aid practitioners in preparing compliant requests. The…