Inter Partes SNQs Outpace Ex Parte 2:1
Looking back on 2010 patent reexamination filings, the mean number of Substantial New Questions of Patentability (SNQs) presented differs based upon the type of reexamination proceeding. For ex parte patent reexamination, the mean value is 8.7 SNQs per request, for inter partes patent reexamination the number is 17.3 SNQs per request. The median values are 6 for ex parte patent reexaminations and 11 for inter partes patent reexamination. Of course, these numbers are unlikely to surprise most practitioners.
For example, ex parte patent reexamination may be requested by a patent owner. In such situations there is certainly little motivation to bury the USPTO in reasoned statements to undermine patentability (IDS filings are another issue altogether). More importantly, requesters of ex parte patent reexamination are not bound by the estoppel provisions of inter partes patent reexamination.
The inter partes reexamination statute burdens a requesting party with what some consider to be a significant estoppel provision. Specifically, section 315(c) of title 35 of the United States Code provides that a third-party requester is estopped from asserting at a later time, in a civil action under 28 U.S.C. § 1338, the invalidity of any claim “finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.”(emphasis added).
As the vast majority of patents involved in inter partes reexamination proceedings are involved in concurrent litigation, requesters realize that the statute provides a “use it or lose it” option with respect to available prior art. Therefore, inter partes reexamination proceedings, unlike ex parte reexamination proceedings which have no such statutory estoppel provision, are far more likely to include a greater number of SNQs.
While the examiner may find some of the proposed SNQs to be cumulative, this type of consolidation does little to improve the overall efficiency of inter partes patent reexamination. This is because the requester will inevitably appeal the examiner’s decision to the BPAI. Thus, in the vast majority of inter partes patent reexaminations, the Board considers every SNQ presented in the request. For this reason, I support the reform legislation moving inter partes patent reexamination to the Board, they end up considering it all de novo anyway.