Estimated Workload of Preparing and Filing Reexaminations

As part of the Paperwork Reduction Act of 1995 (44 U.S.C. 3506(c)(2)(A)), the USPTO is required to evaluate its methods of collecting information from the public. In a recent Paperwork Act notice & publication, the Office offered the following estimates for reexamination practice.

Response

Estimated Time Response (hours)

Estimated Number of Annual Responses

Total Hours

Request for Ex Parte Reexamination Transmittal Form (PTO/SB/57)

18 minutes

845

254

Request for Ex Parte Reexamination

40 hours

845

33,800

Request for Inter Partes Reexamination Transmittal Form (PTO/SB/58)

18 minutes

380

114

Request for Inter Partes Reexamination

90 hours

380

34,200

Petition to Review Refusal to Grant Ex Parte Reexamination

15 hours

25

375

Petition to Review Refusal to Grant Inter Partes Reexamination

25 hours

9

225

Patent Owner's 37 CFR 1.530 Statement

7 hours

105

735

Third Party Requester's 37 CFR 1.535 Reply

7 hours

60

420

Amendment in Ex Parte or Inter Partes Reexamination

20 hours

1,165

23,300

Third Party Requester's 37 CFR 1.947  Comments in Inter Partes  Reexamination

25 hours

300

7,500

Response to Final Rejection in Ex  Parte Reexamination

15 hours

320

4,800

Patent Owner's 37 CFR 1.951 Response in Inter Partes Reexamination

25 hours

120

3,000

Third Party Requester's 37 CFR 1.951 Comments in Inter Partes  Reexamination

25 hours

95

2,375

Petition to Request Extension of  Time in Ex Parte or Inter Partes  Reexamination

30 minutes

475

238

Total

 

5,124

111,336

 

Are these estimates in the ball park? How many hours are spent preparing a request for ex parte reexamination? Perhaps most importantly - what is missing here from the time spent in reexamination practice? Comments may be submitted to Susan.Fawcett@uspto.gov (Subject: A0651-00XX Patent Reexaminations comment). Notice at 74 FR 39916.

Assuming that the total -- 111,336 hours -- represent the entire amount of attorney time spent on reexaminations. Those hours are the equivalent of about 60 full time patent attorneys.

8 thoughts on “Estimated Workload of Preparing and Filing Reexaminations

  1. Having done about three dozen reexams for third party requesters and patent owners in the past five years or so, including 10 inter partes reexams, I think many of these numbers are low. While the 90 hours for preparing an inter partes request is about right, it really doesn’t take any less time to prepare an ex-parte request. And the estimates for preparing inter partes responses are very low. Each round of Patent Owner amendments and Third Party comments can be likened to briefing a summary judgment motion in district court. Typically, there is not only the argument itself, but declarations and supporting evidence to prepare for submission. 60 hours for each side is more like it.

    Reply
  2. This is a venue in which you can get rules changed, though in this posture it would be “gentle tweaks,” not wholesale rewriting. This is a “work together as friends and colleagues” proceeding, not the adversarial proceeding that we needed to kill the Appeal and IDS rules.

    OMB can’t approve rules that –

    – impose burdens on the public that are disproportionate to their practical utility to the agency

    – require duplicative filings

    – are ambiguous

    – any other gratuitous busy work

    Once a member of the public raises issues in a letter, the burden is on the agency to show that the paperwork burdens it proposes to impose on the public are reasonably necessary to efficient function of the agency. So this is a fairly powerful proceeding!

    For examples of letters that were effective in getting OMB to disapprove rules in whole or in part, see –

    – the attachments at the bottom of this article link to patentbaristas.com

    – the letters shown in the bottom half of this page link to reginfo.gov

    This is a great opportunity to work with the new Kappos administration, to inform them of where reexamination proceedings are needlessly burdensome. The great thing here is that the issues are already in play – you don’t have to get a whole new review process started – and various agency-oversight-uber-agencies are looking in on things, so your comment letters will have real effect.

    Reply
  3. Michael, thanks for cleverly comparing the AIPLA Economic Survey data with the PTO attorney time data for reexaminations.
    However, I would doubt if the AIPLA mean billing average of only $280/hour used as a divisor is typical of the more senior IP attorneys that would be more likely to be used for something as important as a reexamination?

    Reply
  4. I believe their numbers are low by at least about 15%.

    For example, the AIPLA Report of the Economic Survey 2007 (for the year 2006), pages 40 & I-82, shows an ex parte re-exam having the average fees, based on 277 respondents, at $12,974. No distinction is made between an owner’s request and a third party request, and of course this was before KSR. That same survey has the mean hourly billing rate for 2,733 respondents for IP work in 2006 at about $280. So, the gross expectation (guesstimation) for 2006 is 46 hours. In our post-KSR world, options for laying the groundwork for Section 103(a) rejections (particularly important to third parties) are now increased, and a thorough filing, i.e., a request challenging many more claims that just the base claims and/or those having limitations cited as the (nominal) reason for allowance, can be considerably above the (guesstimated) 2006 average.

    The AIPLA 2007 ex-parte re-exam survey data also has a first quartile of $4000 and a third quartile of $16,750. I speculate that the owner requests tend toward the first quartile while the third party requests tend toward the third quartile. Accordingly, I am hopeful that one day the PTO data (and the AIPLA data) be distinguished between third party requester and patent owner requester.

    Reply
  5. It’s good that litigators have something to occupy their time and attention. These individuals are adversarial by nature, highly intelligent, and remarkably resourceful. If litigators were left unoccupied, no doubt the world would soon find itself at war. I submit that the two World Wars might have been avoided if only the profession of litigation had been hungry for more participants during the years leading up to those global conflicts.

    Reply
  6. if litigators are handling it, multiple those numbers by a factor of 20

    Reply

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