The Reexamination Center » Statistics http://reexamcenter.com Your one-stop resource for all things reexamination. Fri, 18 May 2012 21:05:33 +0000 http://wordpress.org/?v=2.8.6 en hourly 1 “All or Nothing Design Patent Reexaminations: On the Rise?” Report by Tracy Durkin on IPWatchdog Reveals the Landscape and Discusses Trends http://reexamcenter.com/2010/06/all-or-nothing-design-patent-reexaminations-on-the-rise/ http://reexamcenter.com/2010/06/all-or-nothing-design-patent-reexaminations-on-the-rise/#comments Tue, 08 Jun 2010 20:26:12 +0000 sterneblue http://reexamcenter.com/2010/06/all-or-nothing-design-patent-reexaminations-on-the-rise/

Tracy-Gene G. Durkin of Sterne, Kessler, Goldstein & Fox PLLC discusses the increase in design patent cases being heard by the Federal Circuit in the past two years and the related trends in design patent reexamination on IPWatchdog.com. Her review of filing trends in design patent reexamination over the past ten years reveals the landscape for both patent owners and third-party requesters. Take a look at the full article on IPWatchdog here.

Reasons to expect an increase in design patent reexamination filings include the effectiveness of the proceeding as a defense strategy for accused infringers, the abundance of qualifying printed publications available in the form of product catalogues and images, the high rate of claim cancellation compared to utility patent reexaminations, a potential increase in the standard for patentability of designs, and the low rate of rejection during design patent prosecution.

As presented at the AIPLA Spring Meeting these trends, coupled with recent Federal Circuit decisions involving design patents, suggest a continued increase in design patent reexamination requests by both patent owners and third-party requesters.  The recent Federal Circuit cases include:  Crocs, Inc. v. International Trade Commission, International Seaway Trading Corp. v. Walgreens Corp. and Egyptian Goddess, Inc. v. Swisa, Inc.

]]> http://reexamcenter.com/2010/06/all-or-nothing-design-patent-reexaminations-on-the-rise/feed/ 0 Milestones for Calculating Reexamination Pendency http://reexamcenter.com/2010/02/milestones-for-calculating-pendency-of-reexaminations/ http://reexamcenter.com/2010/02/milestones-for-calculating-pendency-of-reexaminations/#comments Fri, 26 Feb 2010 22:27:54 +0000 sterne http://reexamcenter.com/2010/02/milestones-for-calculating-pendency-of-reexaminations/ 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.

]]> http://reexamcenter.com/2010/02/milestones-for-calculating-pendency-of-reexaminations/feed/ 0 Historical USPTO Reexamination Statistics http://reexamcenter.com/2010/02/historical-uspto-reexamination-statistics-and-milestones-for-calculating-pendency/ http://reexamcenter.com/2010/02/historical-uspto-reexamination-statistics-and-milestones-for-calculating-pendency/#comments Fri, 26 Feb 2010 21:29:17 +0000 sterne http://reexamcenter.com/?p=1465 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.

Archive of Official USPTO Filing Data Reports

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.

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.

]]> http://reexamcenter.com/2010/02/historical-uspto-reexamination-statistics-and-milestones-for-calculating-pendency/feed/ 0 SKGF Publishes First In-Depth Analysis of Patent Reexamination Appeals http://reexamcenter.com/2010/01/first-in-depth-analysis-of-patent-reexamination-appeals-published-by-dc-based-ip-law-firm/ http://reexamcenter.com/2010/01/first-in-depth-analysis-of-patent-reexamination-appeals-published-by-dc-based-ip-law-firm/#comments Wed, 20 Jan 2010 16:47:13 +0000 sterneblue http://reexamcenter.com/2010/01/first-in-depth-analysis-of-patent-reexamination-appeals-published-by-dc-based-ip-law-firm/ Washington, DC-based intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox P.L.L.C. (SKGF) has published the first paper to provide an in-depth analysis of all aspects of patent reexamination appeals, including appeals from the Central Reexamination Unit (CRU) to the Board of Patent Appeals and Interferences (BPAI), as well as from the BPAI to the Court of Appeals to the Federal Circuit (CAFC).  Appeals from the Central Reexamination Unit provides the first detailed analysis on what is happening to patents in reexamination being appealed at the United States Patent & Trademark Office (USPTO).  The statistics and analysis provided is based on a comprehensive review of all 188 publicly available final decisions rendered by the BPAI from January 1, 2007 to January 1, 2010.  Examples of data collected include various appeal statistics such as time between a Right of Appeal Notice docketing at the Board, and between docketing and a Board Decision on the merits for both inter partes and ex parte reexamination.  It also includes statistics on affirmance and reversal rates by art unit.

This paper will be part of the course materials for the upcoming 5th Annual Advanced Patent Law Institute on January 21-22, 2010 hosted at the USPTO.

“We are pleased to provide cutting edge data and analysis on this important developing area of patent reexamination,” said Robert Greene Sterne, founding director of SKGF, paper co-author, and recognized expert on patent reexaminations.  “Previously unavailable, this data and our analysis confirms what we have known anecdotally: the next big battle ground in reexamination is going to be appeals from the CRU.”

Jon E. Wright, SKGF director, paper co-author and former CAFC clerk observed, “The CAFC is going to be confronting a flood of reexam appeals from the CRU.  The Court is going to have to decide critical issues involving reexams to make the system more timely, balanced and effective.”

Lori A. Gordon, SKGF director, paper co-author, and seasoned reexamination attorney with domain experience in electronics and communications noted, “Our data collection and analysis provides the first ever explanation of what is really happening at the CRU in terms of appeals to the BPAI.  The BPAI is experiencing very significant backlogs in appeals from normal patent examination.  The addition of a significant number of time-critical appeals from the CRU will further test the BPAI’s ability to process reexam appeals with the required ’special dispatch.’”

Paper co-author and SKGF associate Byron L. Pickard added that “Other areas of interest are district court review of reexam rulings under the Administrative Procedure Act and possible mandamus actions.  These areas of reexam law may prove critical as the reexam process matures.”

Download the full paper here: Appeals from the Central Reexamination Unit

]]> http://reexamcenter.com/2010/01/first-in-depth-analysis-of-patent-reexamination-appeals-published-by-dc-based-ip-law-firm/feed/ 0 SKGF Publishes First In-Depth Analysis of Patent Reexamination in the Biotechnology, Chemical, and Pharmaceutical Industries http://reexamcenter.com/2010/01/first-in-depth-analysis-of-patent-reexamination-in-the-biotechnology-chemical-and-pharmaceutical-industries-published-by-dc-based-ip-law-firm/ http://reexamcenter.com/2010/01/first-in-depth-analysis-of-patent-reexamination-in-the-biotechnology-chemical-and-pharmaceutical-industries-published-by-dc-based-ip-law-firm/#comments Wed, 13 Jan 2010 15:07:04 +0000 sterneblue http://reexamcenter.com/2010/01/first-in-depth-analysis-of-patent-reexamination-in-the-biotechnology-chemical-and-pharmaceutical-industries-published-by-dc-based-ip-law-firm/ Washington, DC-based intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox P.L.L.C. (SKGF) has published the first paper to provide an in-depth analysis of patent reexamination in the biotechnology, chemical, and pharmaceutical industries, an increasingly significant patent enforcement source and rapidly developing area of patent litigation practice. Reexamination Practice of Biotech/Pharma Patents in Group Art Unit 3991 provides the first detailed analysis on what is happening to patents being reexamined within this unit of the United States Patent & Trademark Office (USPTO).  The analysis is based on a comprehensive review of over 800 reexamination proceedings from 1999 through 2009 involving biotech and pharmaceutical patents in which detailed data was extracted from file histories.  Examples of data collected include identifying all FDA products associated with Orange Book patents undergoing reexamination, use of affidavits, grounds for rejections, and even the size of reexamination requests. This paper will be part of the course materials for the upcoming 5th Annual Advanced Patent Law Institute on January 21-22, 2010 at the USPTO. “We are pleased to provide cutting edge data and analysis on this important developing area of patent reexamination,” said Robert Greene Sterne, founding director of SKGF, paper co-author, and recognized expert on patent reexaminations.  “Previously unavailable, this data and our analysis confirms what we have known anecdotally: patent reexamination has entered these areas of technology as a potent source of power in patent enforcement.” Gaby L. Longsworth, Ph.D., SKGF director, paper co-author, and an expert in the biotech and pharma areas of patent law observed, “In the past, patent reexamination was not an issue for the biotech and pharmaceutical industries; however, our paper shows how trends are changing.  Biotech and pharma companies need to be on top of these critical developments in patent reexamination practice.” The third co-author and SKGF associate Scott M. Woodhouse, Ph.D., noted “As someone who is regularly involved in executing patent reexaminations in these technical areas, I was surprised about the rapidity of change.  I urge trusted advisors and litigators to carefully review and digest our reexamination data and analysis as they make important enforcement decisions.” Download the full paper here:  Reexamination Practice of Biotech/Pharma Patents in Group Art Unit 3991

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