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Sunday Jun 06, 2010

Improving the Reexamination Process

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

I’d like to focus today on our efforts to improve the reexamination process. Reexamination is an incredibly critical function of our Agency, I have commented, exaggerating only slightly, that the best way to identify the most important patents we grant is to look at reexaminations.  All hyperbole aside, it is no stretch to say that the work of our reexamination team is critically important to the U.S. and global economy, and to our Agency.  We know there are jobs locked up in our backlog; well, I’m sure there are lots and lots of jobs riding on the patents we have in reexamination.

With the growth in reexamination filings since 2002, decisions by the Federal Circuit such as In re Swanson and especially with the growth in inter partes reexamination filings, there are some excellent opportunities for us to improve our internal processes and rules of practice to enable more efficient, and faster handling of the expanded reexamination workload.  The starting point is, well, the starting point: clear identification of issues at the beginning of the reexamination process.  That is essential, and it was addressed by a rule change in Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, 71 Fed. Reg. 44219 (4 Aug 2006), 1309 OG 216 (29 Aug 2006).

However, there is another threshold problem: many requests for reexamination are currently identified as defective where they do not clearly identify the issues to be resolved between the requester and the patent owner.  This in turn delays resolution of the request for reexamination.  The USPTO recently published a document with best practices and FAQs intended to minimize defective requests and facilitate initial processing of these requests. This document was prepared in response to comments from the user community seeking guidance to help avoid the submission of defective requests.  It is another example of the actions we are taking to listen to patent system users and respond very directly to their requests.

As an example of an issue covered in the best practices document, some third party requesters make general allegations that claims are obvious over particular piece(s) of art without any supporting argument. This is contrary to the requirement in the statute that “[t]he request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested”, and it hinders the USPTO in resolving issues raised by the request for reexamination.   The use of general allegations is especially problematic in inter partes proceedings, where a clear identification of issues is essential to give patent owners notice of the issues they will face in the reexamination proceeding.  So the best practices document gives tips to avoid making general allegations, and to ensure all allegations are specific enough to surmount the “clear identification” requirement.

You can find the new “Best Practices and FAQs for filing requests for reexamination compliant with 37 CFR 1.510 and 1.915” on the USPTO Web site.  It covers the “general allegation” issue along with many others. We hope this document will assist parties who are preparing requests for reexamination and will facilitate initial processing of those requests at the USPTO.

As always, comments are welcome.  Thanks for keeping them coming!

Comments:

Excellent step in right direction!

Posted by Kyle Jensen on June 06, 2010 at 03:29 PM EDT #

The effectiveness of patent reexamination is dictated by the quality of evidence and arguments presented to the Office. Currently, close to 40% of requests are returned as non-compliant, as such, the best practice document is a great resource for practitioners unfamiliar with patent reexamination. The effectiveness of the CRU is demonstrated by the popularity of patent reexamination. Of course, there are still refinements to be made that would help improve the quality of patent reexamination. For example, and I have written about this issue extensively, (patentspostgrant.com) the reexamination of means-plus-function claims is hampered by inconsistencies in the statutory scheme. As held by In re Donaldson, a means-plus-function claim cannot be examined without first identifying the underlying structure in the specification (MPEP 2183) for the purpose of determining the existence of an equivalent strcture in the art. Yet, requests for reexamination are accepted that do not identify such structure, but instead rely on the BRI standard to interpret MPF Claims. This leads to a waste of Office resources as demonstrated in last week's BPAI opinion (ex parte Anascape 2010-006119, applying BRI to MPF claims is reversible error). In other words, had the claimed structure been required of the request before finding the SNQ (which should have been the case), the issue would have been before the examiner, and the BPAI would not have had to effectively remand the case. This is not the fault of the CRU, but the fault of the statutory scheme of reexamination. Simply stated, original claims cannot be rejected in reexamination based on 112 support issues. Yet, at the same time, MPF claims cannot be examined without considering support. So, in cases where support may be lacking, the CRU is forced to turn a blind eye; this is a diservice to the public. Perhaps it is for this reason that examiners routinley fall back on the BRI standard. While the enforcement of In re Donaldson may lead to an increase in non-compliance or denied SNQs, training the public in the proper form of a request as it relates to MPF claims makes more sense than proceeding on a reversible claim construction. Where the support is deemed insufficient in the process of examining a MPF claim, the Office needs to be able to identify that deficiency.

Posted by Scott McKeown on June 06, 2010 at 08:14 PM EDT #

Yes, I have a comment. I 'm a patent draftsman. I have notice for years that the standards set forth, have been slipping greatly. I take pride and great detail to make sure the drawings are adherd to. I have talked with partners and associates and they more than agree. Some have been, SHOCKED, at what has been accepted. I have seen for my self and words can not descibe the distaste, I felt. I have to ask, why do you even have a graphic art catagory? I could do there job much better. I would not accept there is a back log, or any other answer. You are the UNITED STATES PATENT office where is the PRIDE. Thanks Guy

Posted by Guy DiMambro on June 07, 2010 at 02:13 PM EDT #

Another aspect of the reexamination process that deserves your attention is the request for continued reexamination (“RCR”). RCR was proposed in a notice published in the March 1, 2005 issue of the Official Gazette. The notice acknowledges that to the extent MPEP § 2240 has been amended to require a substantial new question of patentability as a prerequisite to granting a second request for reexamination, “a patent owner will now be prevented from obtaining entry of an amendment and/or evidence not entered after final rejection … by filing another request for reexamination based on the same substantial question of patentability.” Therefore, “the Office plans to propose a revision to the patent rules to provide for the filing of [an RCR] which would be similar to [RCE] practice.” To date, no such rules for filing an RCR have been promulgated, leaving patent owners subject to the vagaries of the petition process when seeking to enter evidence and amendments after final.

Posted by Victor Wasylyna on June 24, 2010 at 10:52 AM EDT #

Great to know something is being done to address the back-up. I've been involved in filing paperwork before with your department and realize there's lots going on behind the scenes. I'm a small business owner in Atlanta GA, www.affordablecraftsmen.net Everyone wants to complain, but there's only so much tax money to go around, so as a citizen & tax payer, thank you very much for being as efficient as possible & for putting information out there for us to feel included :-)

Posted by Gary McCormick, husband, step-father and remodeler in Atlanta, GA on July 26, 2010 at 04:45 PM EDT #

The notice acknowledges that to the extent MPEP § 2240 has been amended to require a substantial new question of patent ability as a prerequisite to granting a second request for reexamination, “a patent owner will now be prevented from obtaining entry of an amendment and/or evidence not entered after final rejection … by filing another request for reexamination based on the same substantial question of patent ability.” http://tuneup2011.net

Posted by tuneup2011 on October 12, 2010 at 01:51 AM EDT #

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