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.
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.