Ex Parte and Inter Partes Reexamination: Strategies and Tactics

Wednesday, March 3, 2010

Presented By

David Cushing, Sughrue Mion, PLLC
David Emery, Sughrue Mion, PLLC

An important webinar on the fundamentals of US reexamination practice and procedure before the USPTO, sponsored by the American Intellectual Property Law Association was held on Wednesday, March 3, 2010.  David J. Cushing and David Emery of Sughrue Mion, PLLC, of Washington, DC were the presenters. The seminar lasted for 90 minutes and was accompanied by a useful Powerpoint presentation and article. The seminar is available through the AIPLA website for a fee and can be accessed here.

David J. Cushing, Sughrue Mion, PLLC

David Emery, Sughrue Mion, PLLC

As summarized on the AIPLA website: “Ex parte and inter partes reexamination practice is an important tool for both patent owners and non-patent holders.  It is extremely important to anticipate how a reexamination will impact your intellectual property rights whether you are a patent owner engaged in a reexamination or a third party requestor challenging a patent.  The presenters, based on their extensive experience, will provide insights into ex parte and inter partes reexamination practice … Those new to reexamination and those wishing to keep pace with this evolving practice will benefit from this online program.”

Presentation Topics

• Introduction to reexamination;
• Tradeoffs between ex parte and inter partes reexamination;
• Reexamination in the context of litigation;
• Practical aspects of reexamination procedure at the USPTO.

Summary

David Emery begins the seminar with an overview of ex parte reexamination practice and procedure. It is a good basic tutorial that provides relevant statistics and practice tips. He then proceeds to discuss the basics of inter partes reexamination.  At various points in the program polls were taken to assess audience attitude about ex parte and inter partes reexaminations both before and after the Supreme Court KSR decision.  He presents USPTO statistics showing the rapid increase in filings of inter partes re-examinations since 2001. David Cushing is a noted reexamination attorney with considerable experience and the public is fortunate that he shares his practical insights in this seminar. These observations and others are important for successful reexamination practice.

David Cushing

The statistics posted on the USPTO web site show substantial year-over-year increases in reexamination filings as parties become increasingly wary of the very high cost and extremely low success rates for patent litigation.  The good news is that inter partes reexamination is an attractive enough alternative to cause that increase.  The bad news is that the same statistics show that there are 556 pending inter partes reexams (the net of reexamination orders less reexamination certificates) as of the end of 2009, 270 of those from reexamination orders issued in the previous 15 months.  This recent increase in the caseload is stressing the system.

David Cushing, then addresses important practice tips centered on inter partes reexaminations.  He warns practitioners to be careful with their reexamination requests to avoid an unintended “bounce” that could occur for mere administrative informalities. He comments that in his opinion the significant work overload at the Central Reexamination Unit is resulting in a very critical eye being brought to reexamination requests in terms of filing formalities. He also comments on the 50 page requirement for responses to inter partes office actions and how the use of declarations can count in the page limit when it is denominated as part of “attorney argument.”  He also addresses the role of the Substantial New Question (SNQ), particularly with regard to serial reexaminations.

David Cushing

Because the inter partes reexamination rules and proceedings are relatively new, there will be a lot of clarification occurring over the next decade, by interpretation and sometimes revision of the rules and MPEP, and perhaps some PTO policy changes as well.  While this is occurring, there will be frustrations.  But in the meantime, even with its imperfections, inter partes reexamination is a very attractive alternative to litigation. This seminar warrants review by anyone interested in a good overview of reexamination practice and procedure at the USPTO.