PTO Inter Partes Reexamination May Give Insight on Post-Grant Opposition

Hal Wegner sent around an interesting note on inter partes reexamination proceedings at the PTO that includes these statistics

Since the inter partes reexamination procedure was implemented in FY2000, 544 requests for reexamination have been filed.  So far, the PTO has acted on 465 of these requests.  The PTO has granted the request for reexamation, finding a new question related to patentability, in 439 (94%) cases, while denying the request only 26 times. 

Of these 439 granted cases, only 44 have been completed with the issuance of a reexamination certificate.  The average pendency from filing date to issuance of the certificate is 34.9 months.  In 31 of the 44 cases (70%), all claims have been canceled.  In only 4 cases was patentability of all of the claims confirmed, with the other 9 cases resulting in at least some claim amendments.

It took accused infringers a long time to warm up to inter partes reexamination.  In the first three fiscal years after the procedure was implemented, only five requests were filed.  Since then, the number has increased significantly, although it is still not widely used. reexam

What This Means for Post-Grant Opposition

The current patent reform bills pending in Congress, including the bill passed by the Senate Judiciary Committee, contain various forms of post-grant opposition procedures.  Critics of post-grant opposition procedure point out that there are few safe-guards to prevent harassment of patentees with multiple and serial requests that would delay infringement suits to enforce the patents and leave a cloud over the patent until the conclusion.

The current standard for reexamination grant by the PTO is a “substantial new question” related to patentability.  The PTO is granting 94% of requests for reexamination under this standard.  The Senate bill includes a different standard for post-grant opposition requests–an “interesting question” releated to patentability.  This certainly sounds like a lower standard.  Does this mean the PTO will grant 100% of such requests under the “interesting question” standard?

The purpose of post-grant oppositions is to knock out “bad” patents, or patents that should not have been granted, without the expense and delay of a full trial and appeal in court.  Inter partes reexamination does not appear to alleviate the problem of delay:  34.9 months is way too long for a patent that might otherwise be enforced to hang in limbo.  Courts typically grant stays for patents undergoing reexamination.  On the other hand, since only 9% of these patents emerge from reexamination unchanged, the patents should not have been properly enforceable in the first place. 

Assuming a patent term of about 17 years from issuance (probably too long given the increasing pendencies of US patent applications), 34.9 months is over 15% of the term of the patent.  Filing more than one request may effectively kill the patent term even if the patent is eventually upheld.

To contrast with the US procedure, Hal Wegner points out that post-grant opposition proceedings in Japan take 7 months to conclude within the JPO.  Such proceedings are handled by the equivalent of the US Board of Patent Appeals and Interferences (BPAI) that accounts for about 30% of the JPO workforce; but the BPAI only accounts for about 1% of the US PTO workforce.  Clearly, if post-grant opposition proceedings become part of US patent law, many more resources will be needed to implement these proceedings and to make them efficient and expedient.

In the meantime, given the nearly 35 month delay and over 90% success rate of inter partes reexamination requesters, the current system appears to be a great tool for potential infringers to use to delay or prevent patentees from enforcing their patents.

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3 Responses to “PTO Inter Partes Reexamination May Give Insight on Post-Grant Opposition”

  1. Just Thinking Out Loud Says:

    Any thoughts from you or Mr. Wegner as to why reexams take so long to complete?

    Would it be possible to statutorily provide for a super-fast response time — maybe 1 or 2 months, non-extendable, and provide a similar limitation on the USPTO. That way, everyone would know that this thing is “fast track” once it is accepted for reexamination. Of course, if the reason for delay is because of appeal time, etc., this proposal may not help.

    Also, rather than loser pays for the litigation as in some other parts of the world, it might be possible to draft the law to provide for a modified version. For example, if a defendant requests a reexamination of the patent resulting in all claims being cancelled (hence a bad patent), the plaintiff would pay. However, if claims are only amended, the plaintiff would not have to pay.

    • Matt Osenga Says:


      I have never been involved in an inter partes reexamination (there just simply haven’t been many yet). I have been involved in a number of ex parte reexamination proceedings. The following is my experience and how it would relate to an inter partes reexamination.

      The PTO must undertake all reexaminations “with special dispatch,” which has now become a meaningless term. The PTO is supposed to issue a decision on a request for reexamination within 3 months of the filing of the request. Since they’re granting 94% of them in inter partes cases, this is pro forma. In any event, what happens if they don’t act on it within 3 months?

      Patent Owners must file a response to Office Actions within 2 months and can only get extensions of time “for good and sufficient cause” with the request for the extension filed by the original deadline. I have seen patent owners have all claims canceled in ex parte reexaminations because they missed this deadline for requesting an extension, so it does have some teeth. In inter partes proceedings, requesters must file any comments on the Office Action and owner response within 30 days of service of the owner’s response. This deadline is not extendable.

      So, where does the delay come from? In my experience with ex parte reexaminations, it comes from the senior examiners. The main examiners handling reexaminations tend to get the next Office Action done in a fairly timely manner, but the PTO has instituted a policy that reexaminations need to be signed off on by at least 3 examiners (I believe 1 or 2 must be senior examiners or SPEs). This is where the delay is. Senior examiners tend to take a long time to review the original examiner’s work and then may send the case back to the original examiner to redo parts of the Office Action. Then, the cycle starts again. I worked on a reexamination where PAIR told me that the examiner acted on our response within a month or two. It took another 6 months to get the next Office Action because of the review by the more senior examiners. This is where reform is needed at the PTO. They should have examiners who specialize in reexaminations and are required to act on them quickly.


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