Misa Bretschneider | July 26, 2012
Petitions to revive a terminated reexamination give the patent owner a procedural safeguard if it accidentally misses a due date.
While it seems that such petitions are more frequently filed in ex parte than inter partes proceedings, petitions to revive are commonly granted in both types of proceedings.
Usually a patent owner files a petition to revive, asserting an unintentional delay under 37 CFR 1.137(b). The patent owner must also file the petition pursuant to 37 CFR 1.550(e) (for ex parte reexamination) or 37 CFR 1.958 (for inter partes reexamination).
Petitions to revive are relatively simple and straightforward. To file a successful petition, a patent owner must (1) file the late response along with the petition, (2) pay the petition fee as set forth in 37 CFR 1.17(m) ($810 for small entities; $1540 for non-small entities), and (3) include a proper statement under 37 CFR 1.137(b) that the “entire delay” from the response due date to the filing date of the petition was “unintentional.”
If a patent owner files a petition to revive soon after the response deadline, the Office will find condition (3) met if the patent owner simply provides a concise statement that the delay was “unintentional.” Some patent owners provide a brief summary of facts that led to an unintentional delay. While this is not required per se, the Office favorably takes the enumerated facts as a “collective” fulfillment of (3).
The time lag between the due date of a response and the subsequent filing of a petition should be around two weeks (see 95/000,130 giving the patent owner fifteen days to file a petition to revive the reexamination proceedings.) However, the Office has permitted a generalized statement for (3) even after three weeks (see 95/000,017¬). Thus, while this time period is not rigid, it’s best to file the petition within two weeks to avoid Office scrutiny and potential cancellation of the patent.
If, however, a patent owner does not file a petition to revive in a timely manner, the Director will require a more “detailed explanation” showing that the delay was “without qualification, unintentional.” For instance, when a patent owner waited four months after becoming aware of the reexamination termination to file a petition, the Office dismissed the petition and requested additional information, as opposed to a “general allegation” of unintentional delay (95/000,224).
If a petition is dismissed (e.g., because a detailed explanation is not included), the patent owner has another chance to revive the reexamination proceedings. The patent owner has one month from the adverse decision date to file a renewed petition.
One note of caution, of course, is that the allegations in a petition to revive will be scrutinized by the accused infringer in any parallel or subsequent litigation for misstatements that could be construed as attempts to mislead the Patent Office. Care is needed.