The PTO’s Recent Treatment of Reexamination Requests

Scott Daniels | July 6, 2011

We recently looked at 100 inter partes reexamination requests, filed between December and the end of March, and what we found might surprise some. 

First, the PTO is handling requests with “special dispatch.”  In no instance did the PTO take its full three months to rule on a request.  In one case, only 23 days.  Generally, requests were granted or denied within two months of the request filing date.  Moreover, for 53 of the requests, the PTO ordered reexamination and issued a non-final rejection on the same day.  Several actions closing prosecution (ACP) have already issued.

Second, the PTO is looking at requests critically, denying 10 of the 100 requests.  This compares with the PTO’s historical grant rate of 92% for ex parte requests and 95% for inter partes requests.  Even where the PTO grants reexamination, it commonly disagrees with at least a few of the proposed substantial new questions of patentability (SNQs).

Some would look at these figures and conclude that the Patent Office grants too many reexamination requests.  We could not disagree more.  There is a strong element of self-selection with reexamination requests – accused infringers who do not have strong prior art patents or printed publications simply do not pursue reexamination. 

For those considering a request for reexamination, we should add that PTO’s determination of whether an SNQ is raised depends heavily on the original prosecution history, especially the examiner’s stated reason for allowance.  Thus, the PTO’s denial of reexamination is usually based on the requester’s failure to present prior art disclosing the claimed feature that had been lacking in the references cited during the original prosecution.

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