In an earlier post I indicated my suprise that courts continue to “grant stays of litigation pending re-examination – especially inter partes reexaminations which tend to be incredibly slow.” In thumbing through Matthew Smith’s new book on Inter Partes Reexaminations, the following statements caught my attention and reaffirmed my conclusion that stays do not make sense here:
“A fully contested proceeding, therefore, could consume six to seven years. . . . [However t]here is as yet no reliable data available to estimate the total time of the proceeding. As of the end of 2008, the only cases with issued reexamination certificates were those in which technical mistakes were made, or in which at least one party chose not to contest the proceedings.”
The first request for inter partes reexamination was made in 2001 and still no contested inter partes reexamination has completed its course. Mr. Smith’s suggestion of “six to seven years” may well be optimistic.
Part of the Patent Reform Act of 2009 would be to take inter partes reexaminations out of the hands of the examination corps and put it under the direction of “an administrative patent judge.” Under the proposal, the PTO is given authority to spell out the actual procedures. Of course, the Board of administrative patent judges has been handling this sort of trial-in-the-first-instance for many years in the form of interference proceedings. The board already has a trial division that is ready to go. Although there are some outliers, interference proceedings are generally terminted within less than two years. For the Oct-Dec 2009 period, 13 interference proceedings were terminated with an average pendency of 9.5 months. 100% of those cases were terminated in less than two years. See 37 C.F.R 41.200(c) (“Patent interferences shall be administered such that pendency before the Board is normally no more than two years.”)
Notes:
- Matt Smith’s book is online and free (1.5 mb). Smith is a patent attorney at Foley & Lardner's DC Office.
Does anyone have a recommendation of a patent attorney who has successfully represented a patent owner in an inter partes re-exam?
Just to echo the thoughts above, the statistics are highly misleading. It is akin to saying that fully contested litigations take 8-10 years (exhaust all appeals) and therefore the length of a litigation should be assumed to be 8-10 years.
The reality in litigation is that as the proceedings advance, the parties understand their positions better and eventually reach settlement. The same occurs in inter partes reexamination. At some point, one of the parties recognizes that pursuing the matter is no longer effective.
You can see the writing on the wall well before an inter partes reexamination is fully concluded. If inter partes reexaminations are timely filed after the start of litigation, you will have, in most cases, a final decision on the merits at the examiner level before trial.
Lo Ganda,
I don’t know what patent office you are dealing with, but I have also handled several inter-partes reexams over a period of several years, and my experience does not jibe with yours at all. After a lightening fast first action, these proceedings move with all the dispatch of a glacier.
As for inter-partes reexams moving faster than ex-parte reexams, I have, in more than one instance, simultaneously filed for reexams of all patents in a patent family. Inter-partes reexams were filed for those patents eligible, and ex-parte reexams for those not eligible. After receiving an initial action months earlier than the ex-parte reexam, without exception the inter partes reexams languished for months while the ex parte reexams rapidly concluded. It appeared to me that the CRU simply preferred to do the ex-parte reexams where it did not have to address pesky third party requester comments.
Lo Ganda — are the delays at the Board of Appeals?
Dear Question,
Re: “With respect to a court staying a litigation because a rexamination proceeding is going on, does it matter which was filed first, the litigation or the reexamination?”
No; it is entirely it is within the Judge’s discretion whether or not to issue a stay. However, it may influence the Judge.
Requests for stays during litigation often arise as a result of new prior art(s) having been found by the accused infringer.
This “seven year” figure is often cited by knee-jerk reexamination detractors, and I’m disappointed that you fell for the same trap. In fact, Dennis, it’s obvious you haven’t ever handled an inter partes reexam, or been involved in any patent litigation.
First, inter partes reexam proceedings often conclude faster at the examiner-level than do ex parte proceedings because the PTO more quickly issues office actions (they are often accompanied with the order granting the inter partes reexam). The third party’s ability to submit new prior art in response to new claims or claim amendments, and to comment on the patent owner’s response, significantly eases the burden on the examiner and hence the time it takes to compete those proceedings. In the several inter partes reexams I have handled, for both patent owners and third parties, the examiner’s work was completed within 15 months of the date the original request was filed.
And the contested nature of the proceedings invariably results in better office actions and stronger decisions. This is further augmented by the estoppel consequences, which motivate the third party requester to do a more thorough prior art search and to submit its best art (and not hold anythiing back). Any patent lawyer who handles inter partes reexams will tell you that the higher quality of the decisions makes a BPAI appeal seem somewhat futile. This is the true reason most inter partes reexaminations do not go all the way through the appeals process. Many times, the proceedings (and parallel litigation, if any) conclude after the first office action.
Second, your article fails to recognize that a court is not required to maintain a stay during the entire length of an inter partes reexamination. The court has inherent power to control whether, or for how long, a stay will remain in place. If the examiner confirmed all of the claims in reexam, for example, or at least those claims that were asserted in the litigation, the court could likely lift the stay and proceed with the litigation notwithstanding the appeal. This rarely happens, of course, because most of the patents that are in inter partes reexam were never examined in light of the best prior art in the first place, but that’s the whole point of the procedure.
With respect to a court staying a litigation because a rexamination proceeding is going on, does it matter which was filed first, the litigation or the reexamination?
“The first request for inter partes reexamination was made in 2001 and still no contested inter partes reexamination has completed its course.”
PTO, please let us know what the problem is and how you propose to correct it. Thank you.
PS – You make a good point here regarding the data. I will look into the concluded inter partes reexaminations to see why those were abandoned. I.e., it will be interesting to know if the parallel litigation was also abandoned.
As you suggest, the statistics for interference cases does include those that were abandoned by one party.
“still no contested inter partes reexamination has completed its course. Mr. Smith’s suggestion of “six to seven years” may well be optimistic.”
Your assumption that abandoned cases were not fully contested is incorrect. Further, your decision to conveniently leave such outcomes out of your statistic distorts the issue rather than clarifes. Do your interference statistics similarly exlude situations where one party decided not to respond?
This might come as news to you, but sometimes the merits of the case weigh against one party so much that, yes, the best course of action for the party to abandon, even if the party was contesting up to that point. This is a merit-based result, not a trivial outcome to be statistically excluded.
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