PTO Gives Advice on Reexamination Petitions and Cautions the Bar

Scott Daniels | January 24, 2011

The PTO has become something of a punching bag among patent practitioners in recent years for the length of time it requires to complete the typical reexamination, especially the typical inter partes reexamination. Long reexamination proceedings, however, are in part caused by the unduly aggressive petition practice of some patentees and requestors.  The PTO, through a recent presentation by Senior Legal Adviser Kenneth Schor, has now issued specific guidelines of what it regards as legitimate petitions and illegitimate petitions – this distinction being backed by the possibility of the PTO’s referring lawyers who file the latter to the Office of Enrollment and Discipline.  The guidelines need to be studied carefully since much of the advice contained therein will not be intuitive for many practitioners.

Mr. Schor’s presentation begins with a summary of a petition’s contents:

(1)   the type of relief requested, including rules, statute, etc., authorizing such relief;

(2)   the relevant facts;

(3)   points requiring review; and

(4)   the required fee, desirably with a general authorization to charge a deposit account.

Each “different matter” must be addressed in a separate petition, 37 CFR § 1.4(c), and petitions must generally be filed within two months of the act giving raise to the need for a petition (though the PTO Rules need to be carefully reviewed for specific deadlines).

Recognizing the difference between instances requiring multiple petitions and those requiring a single petition is extremely important. Multiple petitions may be needed to obtain one type of relief.  For instance, entry of an amendment after final may require three petitions: a petition challenging the propriety of a rejection, a petition challenging an examiner’s refusal to enter an amendment, and a petition to waive Rule 1.16 and enter an amendment.  On the other hand, multiple grounds for same type of relief must be presented in a single petition.

Many favorite litigation practices, such as having the “last word” by filing replies and sur-replies, are frowned upon.  And it is expected that a party will file a single petition addressing a problem, requesting a specific “avenue of relief,” and only if the petition is denied may the party file a second petition seeking a different avenue of relief for the problem.

Mr. Schor next addresses each of a series of commonly filed petitions.  He concludes with a list of do’s and don’t’s.  Each point needs to be studied with care.

Some reexamination practitioners, perhaps including those whose prolix petition practice has contributed to the length of reexamination proceedings, will object that the guidelines constitute rule-making and should be formally proposed by the PTO.  The better course for practitioners will be to heed what is said in the guidelines and act with restraint.

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