Overall pendency is calculated from the request for reexamination filing date to Notice of Intent to Issue a Reexamination Certificate (”NIRC”). Proceedings that go up on appeal to the BPAI may follow a separate procedural track. There are many milestones to consider and practitioners are advised to review averages of pendency with care. Each proceeding is unique and (as the range of data suggests) the “average” reexamination proceeding is difficult to typify. In general, policies governing this process are intended to facilitate the PTO’s compliance with its statutory mandate for special dispatch in handling reexamination proceedings.

Pending Reexaminations

Overall pendency is calculated from the filing date accorded (e.g., upon meeting the requirements of 37 CFR 1.510 or 1.915) to Notice of Intent to Issue a Reexamination Certificate (”NIRC”). Issuance of a NIRC informs the parties that a reexamination proceeding has been terminated, whether by failure of a party to timely file a required response, or by resolution of all outstanding issues of claim patentability. The NIRC discloses the final status of the reexamined claims. NIRCs will not issue in cases where the owner or Third-Party exercises their right to appeal to the Board of Patent Appeals and Interferences (”BPAI”).

Preprocessing

This is the time from filing of the request to assignment of a reexamination control number and official filing date. During this stage, the request undergoes review for compliance with 37 CFR 1.510 and 1.915. A Notice of Incomplete Request for Reexamination (”Notice of Incomplete”) may be issued if the request is defective in one or more respects. The Notice of Incomplete will provide a detailed description of why the request cannot be processed. A fully compliant response must be received within 30 days or else the filing date will be vacated.

Order/Denial

This is the time it takes to receive substantive grant or denial of a request for reexamination by an Examiner at the CRU (e.g., filing date to the date an Order Granting or Denying the request issues). Orders Granting or Denying are not determinations of claim patentability, rather they decide whether the request for reexamination has established the existence of at least one substantial new question of patentability (”SNQ”) based upon prior patents and or printed publications (MPEP 2247.01). In other words, the Examiner has reviewed the request and decided whether or not it raises at least one SNQ.

Grant to FOAM

This is the time between issuance of an Order Granting the request to receipt of the First Office Action on the Merits (”FOAM”). As noted above, an Order Granting is not a determination of claim patentability, it means that one or more claims will be reexamined because the request has established the existence of at least one SNQ based upon prior patents and or printed publications (MPEP 2247.01). The Office Action, on the other hand, will contain grounds of rejection or reasons for upholding the validity of the claims undergoing reexamination. It may adopt or not adopt proposed grounds of rejection from the request. Moreover, the Examiner may sua sponte raise rejections  or choose to reexamine additional claims not specified in the request. See Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, Final Rule, 71 Fed. Reg. 44219.

FOAM to NIRC

This is the time from issuance of the FOAM to issuance of a NIRC. This represents the duration of pendency involving any additional Non-Final or Final Rejections, Actions Closing Prosecution, Patent Owner Amendments and Responses, Third-Party Comments, Petitions, Disclosures, and the range of activities that take place during the course of a reexamination proceeding. Issuance of a NIRC terminates the proceeding and discloses the final status of the claims. Proceedings where Right of Appeal Notice (”RAN”) or Notice of Appeal (”NAP”) as been exercised do not appear to be included in this pendency average.

NIRC to Certificate

This is the average time from NIRC to publication of the Reexamination Certificate in the Official Gazette (OG), certifying the reexamined claims. The NIRC is publicly available on PAIR upon issuance and lists the status of all claims that were subject to reexamination, including any patent claims that have been canceled and any claims added during the proceeding that were not part of the patent that were reexamined and determined to be patentable. Notice to the public regarding issuance of a Reexamination Certificate is announced in the Official Gazette (MPEP 2691) under Granted Patents.

Source of Data

This data is recorded by reexamination control number. Where proceedings are merged, the merged proceeding appears as multiple instances. For this reason the certificate count will not match the number of individual reexamination certificates published in the Official Gazette. Volume and timing data regarding Order, FOAM, NIRC, and Certificate Issuance are tracked in a system called PALM.