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!