Scott Daniels | May 10, 2011
We have previously noted (here) that companies requesting reexamination still prefer ex parte reexamination over inter partes reexamination. For those patents where reexamination was requested last week, and where ex parte reexamination was an option because of the patent’s priority date, a clear majority of requesters chose ex parte reexamination. Whether this is because of the lower fee, or because of the possibility of withholding the company’s identity, we do not know.
The PTO Board’s decision yesterday in Tesco v. Weatherford/Lamb, however, demonstrated anew that the right of a requester to participate in inter partes reexamination, including the right to appeal to the Board, can be enormous. There, Requester Tesco appealed the examiner’s decision not to adopt two rejections proposed in the Request, and the Patentee Weatherford/Lamb appealed three final rejections maintained by the examiner.
The significance of the Board’s decision was not in its technical and legal analysis of the rejections, but in the final score: the Board reversed each of the three rejections maintained by the examiner, but reversed the examiner’s decision not to adopt the two rejections proposed by Tesco in its Request. These two rejections are now entered as “new grounds for rejection,” and the matter returns to the examiner for further consideration. Without Tesco’s participation in the appeal, the validity of the patent might now stand affirmed.
Certainly we do not propose a one-size-fits-all rule that all requesters should seek inter partes reexamination where available. Still, every requester would do well to acknowledge the benefits of full participation throughout the reexamination process.