Bolstered by a recent district court win in Sony v. Dudas, the PTO has declared that it will no longer reexamine all claims of a patent as a matter of course. Rather, the PTO will only reexamine claims for which “a) reexamination was requested, and b) a substantial new question of patentability (SNQ) was raised.”
Documents
- USPTO: Notice of Clarification of Office Policy to Exercise Discretion in Reexamining Fewer than All the Patent Claims
- Opinion: Sony Computer v. Jon Dudas.
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I would be surprised if the PTO reduced the reexamination fee based on fewer claims being examined. As I read the CFR, the claims in excess of twenty fee for reexaminations only applies to claims submitted in the reexamination (i.e. by a patent owner who is requesting reexamination). Since I would assume that anyone who is submitting claims in a reexam would also want the PTO to examine them, I would assume that examination of those claims would be specifically requested by the patentee, and thus would have to be paid for.
As for Steve’s comment about delay, I suspect that the PTO would refuse to grant reexamination for any claims that the requestor could have included in his first reexamination request but failed to do so, especially if the same art was cited in the second request, but against different claims. There would be a similar risk for Steve’s point #2, though if the requester could put forth different art or different arguments, you might have a chance.
So will the PTO proportion the reexamination fee to the number of claim reexamined? For example, fee for the request for inter partes reexamination is $8,800.00. If they only request one of the twenty claim to be reexamined, will the fee be prorated to $440 (=1/20*$8,800.00). Also, for patents with more than 20 claims, will the PTO not charge the $50 Reexamination claims in excess of twenty fee when it only examines less than twenty claims?
The PTO’s policy can be an excellent tool for ex parte requesters.
1. Delays: I could see using this to put a patent in limbo for a long, long time by filing a series of requests on just one or two claims.
2. Inter parte benefits from an ex parte proceeding: Request reexam on a subset of claims. Wait and see what the examiner and patent owner say. Then file a new request on a new subset of claims, and use the new request to correct the examiner and/or rebut the patent owner.
For the patent owner, once SNQ is shown on some claims, you might as well request reexam on everything else. That way you get the issues cleared and have the best chance to whitewash the validity problems.
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