Who is Responsible for Reexamination Delays?

Scott Daniels | October 4, 2010

A number of patent bloggers criticize the PTO for the long pendency of reexamination proceedings.  The statutory requirement of “special dispatch” for reexaminations is often uttered in tones oozing with sarcasm.  But who is responsible for the length of reexaminations?

Surprisingly (or unsurprisingly), at least part of the blame lies with the large number of papers filed by the private parties.  In recent years the docket sheets of some reexaminations have come to resemble the docket sheets of heavily litigated District Court cases.  Lawyers in disputes over commercially important patents “leave no stone unturned” in pursuit of their clients’ interests.

An example of such zealous representation is summarized in the PTO Director’s denial of the patentee’s petition for reconsideration in Inter partes Reexamination 95/000,332.  The ‘332 reexamination involved U.S. Patent No. 7,228,383 which was the subject of an infringement action between Visto and Research in Motion, that settled in July 2009. The following dates are relevant:

– February 6, 2009 – the PTO issued a non-final Action rejecting the claims.

– April 6, 2009 – the patentee filed a response to the Action.

– April 20, 2009 – the PTO issued a Notice of Defective Paper, pointing out certain informalities in the patentee’s amendment of claims.

– April 29, 2009 – the patentee filed a corrected response to the Action.

– May 27, 2009 – the third party requester submitted comments regarding the patentee’s April 29th response.

– June 17, 2009 – the patentee petitioned the CRU Director under 37 CFR § 1.181 to strike the requester’s comments of May 27th, as not being timely filed – the patentee argued that the 30-day period for the requester’s comments started on April 20th when the patentee’s first response was filed, not April 29th when the patentee’s corrected response was filed.

– September 9, 2009 – the CRU Director denied the patentee’s petition.

– October 8, 2009 – the patentee petitioned the PTO Director to reverse the CRU Director’s refusal to strike the third party requester’s comments of May 27th.

The PTO Director denied the patentee’s petition.  He first noted that decisions of the CRU Director are entitled “an administrative presumption of correctness” and will be reversed only where there is “a convincing showing of clear error.”  Here, the MPEP expressly permits a requester to comment on either a patentee’s initial response or to its corrected response. The PTO Director concluded that there was no clear error: it was reasonable for the requester’s 30-day comment period to begin from the patentee’s April 29th response.

Was the patentee justified in filing not one, but two, petitions?  Perhaps.  But certainly such filings play a part in the delays commonly blamed on the PTO.

It might also be noted in defense of the PTO that it issued an Action Closing Prosecution (ACP) on March 4, 2010, in response to claim amendments filed by the patentee.  Those amendments, however, had failed to comply with the requirements of 37 CFR § 1.530(e).  Instead of issuing a Notice of Non-Compliance, the PTO merely mentioned the errors in passing, stating a preference for advancing the prosecution of the reexamination.

A Reexamination Certificate has since issued, canceling the claims.  The patentee states that it is now defending its claims in a reissue application.

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