In a 2005 study, attorney Joseph Cohen found that 98% of all inter partes reexamination requests had been granted. On March 30, 2006, the PTO issued a proposed rule change that might change that outcome. According to the proposal, a patent owner will be given an opportunity to reply to the third-party reexamination request prior to the examiner’s decision on the request. Thus, a patent holder may be able to convince the PTO of an absence of a “substantial new question of patentability” and avoid the reexamination proceeding altogether.
In a bit of give-and-take, the proposal would also prohibit supplemental patent owner responses to an Office Action without a showing of sufficient cause.* Comments on the proposed change are due by May 30, 2006 and should be e-mailed to AB77.comments@uspto.gov.
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* Several other formalities regarding reexamination practice are also included in the proposed change.
The new “patent owner reply” to a third-party request will apply to both ex parte and inter partes reexamination proceedings. One interesting consequence is that the original request must be served on the patent owner by facsimile, personal service, or overnight courier; first class mail will no longer suffice. See proposed rules 1.510(b)(5) and 1.915(b)(6). This was probably done to cause the 30-day patent owner reply period to start running immediately, so that the Office will have the greatest time possible to act on the request within the statutory 3-month period.