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.
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.
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.