Featured Posts
- Facebook Loses Reexaminations of Pragmatus’ Patents
- How is Reexamination Treating Round Rock Research?
- Reexamination has not Saved Apple against MobileMedia Patents, So Far
- What is an “Involved Application” in IPR Practice?
- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
- Think IP Strategy Offers 2011 News Almanac
- An Update on Oracle’s Infringement Case against Google
- PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
- Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
- Oracle Patent to Emerge from Reexamination
- VirnetX again Sues for Infringement, and again Faces Reexaminations
- How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
- PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
- Oracle ‘520 Moves toward Confirmation in Reexamination
- Google Gets Mixed Result against Oracle’s Seventh Patent
- Did Google Request Reexamination of Lodsys Patents?
- Two Updates
- Oracle v. Google Android® Update
- Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
- 最初が肝心：不備のない再審査請求書を作成するために
- That’s My Patent You’re Reexamining…
- “Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
- The Basics
Noteworthy Links
- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
Favorite Patent Blogs
- All Things Pros
- CAFC Alert
- FDA Law Blog
- IPWatchdog
- Patent Docs
- Patently-O
- PLI Patent Law Practice Center
- Think IP Strategy
- US Patent Post-Grant Opposition
Recent Requests
PTO Statistics
The PTO’s Recent Treatment of Reexamination Requests
| 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.
