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The Reexamination Center Executive Interview: Dr. Nancy J. Linck

The Reexamination Center interviews Nancy J. Linck, Ph.D. on a variety of post-grant challenge options at the PTO, including inter partes and ex partes reexamination and the new options introduced within the America Invents Act signed into law in September 2011.

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Quick Stat

2,041

Total number of requests for reexamination currently pending as of June 30, 2010.

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Official USPTO Filing Data

These official USPTO statistics represent data concerning all requests for reexaminations filed since July 1, 1981 for ex parte and since November 29, 1999 for inter partes proceedings. They are updated quarterly by the USPTO. Data is recorded by reexamination control number. Thus, where proceedings are merged, the merged proceeding appears as multiple instances. Volume and pendency averages for key milestone are tracked in a USPTO system called PALM.

Reexamination Operations Statistics

The most recent reexamination statistics from the USPTO have been released, current to September 30, 2010. These counts report the volume and timing of pending proceedings for Quarter 4 of Fiscal Year 2010. The charts also include reexamination statistics for inter partes requests, ex parte requests, and the volume and timing of both inter partes and ex parte reexaminations from 2007-2009 (Download Here).

Ex Parte Reexamination Statistics

The most recent reexamination statistics from the USPTO have been released, current to September 30, 2010. The official USPTO report of “Ex Parte Reexamination Filing Data” provides cumulative statistics for all requests for reexamination filed since July 1, 1981. The charts also include the number known to be in litigation, number granted or denied, overall pendency, and certificate outcome analysis (Download PDF).

Requests filed may be terminated for failure to comply with the requirements of 37 CFR 1.510 and are accounted for separately. See Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, Final Rule, 71 Fed. Reg. 44219 (August 4, 2006).

Inter Partes Reexamination Statistics

The most recent reexamination statistics from the USPTO have been released, current to September 30, 2010. The official USPTO report of “Inter Partes Reexamination Filing Data” provides cumulative statistics for all requests for reexamination filed since November 29, 1999. The charts also include the number known to be in litigation, number granted or denied, overall pendency, and certificate outcome analysis (Download PDF).

Requests filed may be terminated for failure to comply with the requirements of 37 CFR 1.915 and are accounted for separately. See Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, Final Rule, 71 Fed. Reg. 44219 (August 4, 2006).

Historical USPTO Filing Data

These historical statistics produced by the USPTO as “Reexamination Filing Data” account for all requests for reexamination filed since July 1, 1981 (for ex parte) or since November 29, 1999 (for inter partes). They are updated quarterly by the USPTO and are available at ReexamCenter.com for previous years no longer posted. Operational statistics have recently become available and show quarterly volume and timing in processing requests for reexamination.

Reexamination Information

Link to the USPTO homepage for information including methods for searching by control number, links to historical and operational statistics, documents defining terms and milestones highlighted by the Central Reexamination Unit (CRU).

Certificates of Reexamination

Upon completion of reexamination, the Commissioner will issue and publish a certificate canceling any claim not found patentable, confirming any claims found patentable, and incorporating any amended or new claim determined to be patentable.

Official Gazette Notices

The USPTO publishes the Official Gazette weekly, including notice of requests for reexamination and issuance of reexamination certificates. To access this information, click on the date of the Official Gazette of interest and check Notices or Browse Granted Patents.

USPTO Forms Homepage

Comprehensive index of forms available to help meet certain requirements for the proceeding, including but not limited to the Request for Ex Parte Reexamination Transmittal (PTO SB-57) and the Request for Inter Partes Reexamination Transmittal (PTO SB-58).

Glossary of Terms

USPTO provides a glossary of terms defined for their purposes, including definitions related to patent reexamination administrative and substantive procedure. The glossary links to related webpages and subdomains of the USPTO website.

Filing Compliant Reexamination Requests

This document is intended to assist reexamination requesters in filing requests for reexamination that are compliant with 37 CFR 1.510 and 1.915, so that the requests will be assigned a filing date and forwarded to the examiner. Compliance with these rules will also tend to highlight information relevant to the examiner’s decision on whether to grant the reexamination.

Rules, Guidelines, and Statements

Streamlined Procedure for Appeal Brief Review in Inter Partes Reexamination Proceedings (Effective Date August 17, 2010)

The Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively “Chief Judge”), will have the sole responsibility for determining whether appeal briefs filed in inter partes reexamination proceedings (i.e., appellant’s briefs, respondent’s briefs, and rebuttal briefs) comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The examiner will no longer review appeal briefs for compliance with the applicable regulations. Read More Here.

USPTO Pilot Program for Waiver of Patent Owner’s Statement in Ex Parte Reexamination (Effective Date August 5, 2010)

The USPTO recognizes the need to reduce pendency and improve efficiency and is thus considering a number of short and long-range initiatives that can be implemented in phases. In this notice, a pilot program in which patent owners may waive the right to file a patent owner’s statement upon a request made by the USPTO. This will enable USPTO in suitable cases to issue the first Office action on the merits together with or soon after the reexamination order, and thereby reduce the pendency of the proceeding by about three to five months. Read More Here.

Clarification on the Procedure for Seeking Review of a Finding of a Substantial New Question of Patentability in Ex Parte Reexamination Proceedings

June 25, 2010 - The USPTO published in the Federal Register a notice “clarifying the procedure for seeking review of a determination that a substantial new question (SNQ) has been raised in an ex parte reexamination proceeding.”  The notice clarifies that Director Kappos has delegated to the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) the authority to review issues relating to the grant of the SNQ.  The Chief Judge can further delegate the SNQ review to a panel of Administrative Patent Judges who are deciding the appeal in the ex parte reexamination proceeding. Read More Here.

Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings

May 25, 201 – The USPTO published in the Federal Register a notice of “Streamlined Procedure for Appeal Brief Review in Ex Parte Reexamination Proceedings” for the review of appeal briefs in ex parte reexamination appeals to increase the efficiency of the appeal process and reduce pendency of appeals. According to the Federal Register, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively “Chief Judge”), will have the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceeding appeals comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration.  The examiner will no longer review appeal briefs for compliance with the applicable regulations.  The USPTO expects to achieve a reduction in ex parte reexamination proceeding appeal pendency as measured from the filing of a notice of appeal to docketing of the appeal by eliminating duplicate reviews by the examiner and the BPAI. Read More Here.

Requirements for Ex Parte and Inter Partes Reexamination

April 9, 2007 – USPTO announces revisions to the rules of practice relating to ex parte and inter partes reexamination:

  1. Designating the correspondence address for the patent as the correct address for all communications for patent owners;
  2. Providing for the use of a single “mail stop” address for the filing of substantially all reexamination papers;
  3. Prohibiting supplemental patent owner responses to an Office action in an inter partes reexamination proceeding without showing of sufficient cause;
  4. Miscellaneous clarifying changes as to terminology and applicability of the rules;

The PTO did not implement its proposal to newly provide for a patent owner reply to a request for reexamination, prior to the Office’s decision on the request.

Office Policy To Exercise Discretion in Reexamining Fewer Than All the Patent Claims

October 31, 2006 – Clarification regarding general policies on addressing requests for reexamination of fewer than all the claims in a patent, and on conducting examination following requests that fail to raise a substantial new question of patentability (SNQ) for some of the claims requested.

Revisions and Technical Corrections Affecting Requirements for Reexamination – 2006

April 25, 2006 – USPTO proposes changes to the rules of practice relating to ex parte and inter partes reexamination:

  1. Providing for a patent owner reply to a request for an ex parte or an inter partes reexamination prior to the examiner’s decision on the request;
  2. Prohibit supplemental patent owner responses to an Office action in an inter partes reexamination without a showing of sufficient cause;
  3. Designate the correspondence address for the patent as the correct address for all communications for patent owners;
  4. Providing for the use of a single “mail stop” address for the filing of substantially all reexamination papers; and
  5. Miscellaneous clarifying changes as to terminology and applicability of the rules.

Clarification of Filing Date Requirements – 2006

March 21, 2006 – The USPTO specifically revises rules of practice relating to the filing date requirement such that a request for ex parte reexamination or for inter partes reexamination must meet all the applicable statutory requirements before a filing date is accorded.

USPTO Press Release Announcing Central Reexamination Unit

July 29, 2005 – Press release of USPTO announcing implementation of new processes for handling reexamination proceedings to improve timeliness and quality. States that patent reexamination will be “a valuable, low-cost alternative to litigation for determining the patentability of the claims.”

Oral Testimony of Jon Dudas to the Senate Including Comments on Patent Reexamination

April 21, 2005 – Testimony provided by Jon Dudas, Director of the United States Patent and Trademark Office to the Subcommittee on Intellectual Property Committee on the Judiciary of the United States Senate, entitled “The Patent System of Today and Tomorrow.”

Report to Congress on Inter Partes Reexamination

June 24, 2004 – Addressed (1) the progress of the inter partes reexamination procedure since they were established on Nov. 29, 1999, and (2) the results of the USPTO’s internal evaluations and round table meeting with the USPTO’s customers to identify any inequities and challenges.

Public Comments Received Regarding Inter Partes Reexamination Proceedings

February 17, 2004 – Organizations and persons listed submitted comments in response to the “Request for Comments and Notice Regarding Round Table Meeting Regarding Equities of Inter Partes Reexamination Proceedings” in the Federal Register at 68 Fed. Reg. 75217 (December 30, 2003).

USPTO Round Table on Equity of Inter Partes Reexamination Proceedings

February 17, 2004 – Comments received by the USPTO to evaluate the equities of inter partes reexamination proceedings in preparation for a USPTO Round Table and report to Congress on the topic. Panel includes Michele A. Cimbala submitting comments (PDF).

Reexamination Guidelines Related to Previously Cited/Considered Prior Art

June 3, 2003 – A USPTO memorandum to the Patent Examining Corps regarding revised guidelines on usage of previously cited and or considered prior art as references in reexamination following the federal circuit’s decision in In re Portola Packaging, Inc.

Rules to Implement Optional Inter Partes Reexamination Proceedings

November 21, 2000 – The American Inventors Protection Act of 1999 includes an amendment to the Patent Act authorizing the extension of reexamination proceedings via an optional inter partes (multiparty) reexamination procedure as a means for improving the quality of United States patents.

Establishment of Patentability Review Conferences in Ex Parte Reexamination Proceedings

August 4, 2000 – Announcement that a “patentability review conference” will be convened in each ex parte reexamination proceeding (1) just prior to issuing a final rejection, and (2) just prior to issuing a Notice of Intent to Issue Reexamination Certificate (NIRC).

Guidelines for Reexamination of Cases in View of In re Portola Packaging, Inc.

March 31, 1999 – The USPTO publishes final version of guidelines to be used by Office personnel in their review of requests for reexaminations and reexaminations for compliance with the decision in In re Portola Packaging, Inc.

Proposed Guidelines for Reexamination of Cases in View of In re Portola Packaging, Inc.

June 9, 1998 – The USPTO requests comments from the public on interim guidelines that will be used by Office personnel in their review of requests for reexaminations and ongoing reexaminations for compliance with the decision inIn re Portola Packaging, Inc.