A Rush to File at the End of Inter Partes Reexaminations

By Dennis Crouch

Two weeks ago I posted a list of issues to consider prior to the September 16, 2012 post grant changeover.  Two big changes were that (1) the relatively inexpensive inter partes reexamination is no longer available; and (2) the fee for filing an ex parte reexamination has risen 7-fold from $2,500 to $17,750.  In the days leading up to the changeover, several hundred reexaminations were filed –almost an entire year’s worth of reexamination requests.  See the chart below for inter partes reexaminations and note that the September filings are only for the first half of September (no filings accepted after September 15).

 

PatentlyO151

 

The Central Reexamination Unit (CRU) may be working quite hard for the next three months to meet the 90–day deadline for determining whether or not to grant the petitions.

This suggests that many potential patent challengers are not happy with the new system. 

9 thoughts on “A Rush to File at the End of Inter Partes Reexaminations

  1. 6

    many potential patent challengers are not happy with the new system.

    Possibly. We’ll know better if the number of monthly requests drops to near zero over the next six months. If in six months we’re still seeing a couple dozen requests filed each month, it shows that the vast majority of “potential patent challengers” weren’t terribly concerned about the change in fees and decided to wait until the a re-exam was absolutely necessary rather than rush to squeeze a request out at the last minute.

  2. 4

    “This suggests that many potential patent challengers are not happy with the new system.”

    Dennis — Actually, I don’t know if that’s true. You have to consider the 1-year statute of limitations provision. Many of these were filed by challengers who were sued on the patents more than 1 year before Sept. 17. Thus, it was now or never. Inter partes review isn’t an option for those parties.

    I’m sure quite a few of challengers just don’t like the new system too though.

  3. 3

    These are preliminary numbers as the filing dates have not been official recognized yet.

    15-Sep-12 — 36
    14-Sep-12 — 125
    13-Sep-12 — 51
    12-Sep-12 — 15
    11-Sep-12 — 1
    10-Sep-12 — 2

  4. 1

    Busy?

    They grant 95% already, but they are slowed by the need to write reasons. I don’t know if this is really necessary. Just order the reexamination. The “real” examiner can revist the question of SNQ when he has to prepare the first action. This seems to happen quite often, especially if there has been a prior reexamination or if the examiner cannot even make a prima facie case with the art submitted.

    On the other hand, if one is going to deny the petition, one needs to give reasons. There almost always is a petitition, which is a form of appeal.

Comments are closed.