Pendency

September 2nd, 2009

Reexamination pendency is a perennial hot topic for a number of reasons.  First, for reexamination to be an effective post-grant venue for challenging patent validity, it must be concluded in a timely and efficient manner—i.e., with the “special dispatch” required by statute.  To avoid prejudice, however, the PTO must nonetheless act in a deliberate and fair manner by giving the patent owner a full opportunity to defend the patentability of its claims.  Second, reexamination pendency is an important factor weighed by the courts when deciding whether to stay concurrent litigation.  Third, predictable reexamination timetables are enormously helpful to both third-party requesters and patent owners when they work reexamination strategies into dynamic district court litigation and ITC investigation timetables.  In short, uncertainty in pendency of a reexamination proceeding diminishes the fairness and effectiveness of reexamination and litigation for all involved parties.

Reexamination pendency has attracted high-level scrutiny.  For example, then Chief Judge Paul R. Michel commented on the ability of the PTO to handle post-grant proceedings in an Address at the Federal Trade Commission Hearing on the Evolving IP Marketplace, held on December 5, 2008:

To me, the proposed alternative for weeding out bad patents is convincing.  Can we really get a faster, better, and cheaper review of challenged patents at the PTO than in the courts?  Experience with the existing PTO reexamination procedures raises doubts.

And the PTO is already overwhelmed by ex parte examination with average pendencies over three years, in some arts, far longer.  Is it realistic to expect the PTO to be able to conduct a new form of inter partes reexamination faster and cheaper than the courts?  And more accurately?  Unless its new procedures, competencies, and powers can be clearly defined, how will we know what consequences would follow?  How will we know this is not a mirage in the desert that looks like an oasis, but has no water?

PTO statistics on reexamination pendency are available, and the authors have done their own statistical analysis on reexamination pendency.  The results are presented in Section IV.A.  However, general statistics are useful only up to a certain point.  To perhaps remove some of the uncertainty and provide a more nuanced analysis of reexamination pendency, we share below some general observations on pendency and illustrate how different reexamination milestones can result in widely varying timelines from as little as three months to periods well in excess of six years. 

Reexamination Milestones

There are several early reexamination milestones from which important clues on pendency may be ascertained: (1) the request, (2) the reexamination order, and (3) the first Office action.

  1. The Request: The request itself can provide a number of early clues to potential reexamination pendency.  For example, for how many claims has reexamination been requested—all claims, or only a limited subset of claims such as only those asserted in litigation?  How many separate substantial new questions of patentability (“SNQs”) SNQs are alleged?  What is the nature of the proposed rejections—do they primarily allege anticipation, or is obviousness in play?  How many different references are used for the proposed rejections?  Is the request ex parte or inter partes?  Not surprisingly, the CRU is generally slower to act on complicated reexamination proceedings than it is to uncomplicated ones.  The requester has complete control of these decisions and can therefore assert some control over likely pendency from the outset.
  2. The Reexamination Order: The reexamination order, which is the first opportunity to see how the CRU received the reexamination request, is the second big pendency milestone.  By its own rules, the CRU should rule on whether to initiate a reexamination within three months of the request.  The CRU has complete discretion in this regard and a number of scenarios are possible, all of which have a direct impact on reexamination pendency. There are only limited mechanisms for challenging the PTO’s decision to order (or not order) a reexamination. For example, the reexamination request can be denied, granted in full, or anything in between.  Clearly, an outright denial—a finding of no SNQ—does not bode well for the requester and can lead to a very short pendency.  On the other hand, full or partial adoption of the alleged SNQ’s indicates the CRU was at least persuaded that the reexamination should move forward.
  3. The first Office Action: The first Office action will also have many clues to potential reexamination pendency.  For ex parte reexamination, the first Office action cannot arrive until after the period for patent owner response has expired (37 C.F.R. § 1.530(b)).  For inter partes reexamination, PTO procedures dictate that the reexamination order be accompanied by the first Office action on the merits (37 C.F.R. § 1.935). Just because the CRU has adopted all or part of the alleged SNQs does not necessarily imply that a full blown reexamination is in the works.  For instance, the CRU is well within its authority order a reexamination, and then in the first Office action indicate that one or more of the claims under reexamination are allowable.  This bodes well for short pendency.  On the other hand, full adoption by the CRU of the proposed grounds of rejection indicates longer pendency.  As with the reexamination order itself, the first Office action will provide the parties with a decent idea of how receptive the CRU is to the reexamination request.  Most district court judges will not consider staying a concurrent litigation at least until the CRU has ruled on whether to initiate the reexamination.  And no stay decision should be made without at least considering the details of the reexamination order and first Office action.

For inter partes reexamination, these first three milestones should all occur no later than three months after the initial request for reexamination.  For ex parte reexaminations, these milestones should occur five to six months after the reexamination request.  These first three milestones thus occur relatively early in the reexamination process.  And they go a long way towards determining overall scope, level of involvement and complexity of the reexamination.  It therefore behooves all parties (including the court) to wait for these early milestones before investing heavily in any previously predicted reexamination pendency. 

Other Reeamination Milestones

If it appears that the reexamination will proceed on the merits, then there are a number of other milestones that will impact overall pendency.  The involved parties, including the court, should recognize these milestones and be nimble enough to take them into full consideration.  These milestones include the PTO’s response to the patent owner reply (and requester’s comments thereto in inter partes reexamination).  In ex parte reexamination, this response takes the form of either a final Office action or a Notice of Intent to Issue a Reexamination Certificate, which is commonly referred to as a “NIRC.”  For inter partes reexamination, this response takes the form of an Action Closing Prosecution (“ACP”).  The CRU has a stated goal to get to this point in the reexamination proceeding inside of two years from the filing date of the request.  As with the first Office action above, this milestone provides the next set of clues as to reexamination pendency. 

As a rule, ex parte reexaminations proceed more quickly from this point simply due to the ex parte nature of the proceeding.  If the decision is favorable to the patent owner—such as a NIRC or indication that some claims are allowable—reexamination pendency will likely be shortened.  However, if the patent owner elects to appeal all or part of the decision, pendency will be lengthened by at least another one and a half to two years.

For inter partes reexamination, on the other hand, the ACP and subsequent Right of Appeal Notice (“RAN”) typically signal an appeal.  This is due to the inter partes nature of the proceeding—the patent owner may appeal any final rejection of any claim, while the requester can appeal any decision favorable to patentability, including the CRU’s refusal to adopt a presented SNQ, or refusal to maintain any proposed ground of rejection.  Thus, unless one of the parties surrenders or is precluded from participation due to settlement terms, inter partes reexaminations routinely involve at least another one and a half to two years pending appeal to the BPAI.  For both ex parte and inter partes reexamination, appeals to the Federal Circuit are an option.

The time period for appeals of a reexamination proceeding from the CRU to the BPAI and then to the Federal Circuit can vary, but at a minimum will take three years with current backlogs and processing requirements. With ex parte reexaminations, only the patent owner can appeal a rejection and the third party requester has no standing to appeal a favorable decision concerning the claims in reexamination.  Since the NIRC and the reexamination certificate cannot issue for the patent owner in an ex parte reexamination unless the patent owner is satisfied with the CRU decisions concerning all of the claims in the reexamination, the patent owner is forced to appeal the rejection of a single claim even though all of the other claims in reexamination are confirmed or allowed.  This all or nothing aspect of the reexamination process can force appeals and is unlike original prosecution where allowed claims can be issued in a patent and rejected claims can continue to be prosecuted in a pending application.  All in all, however, the ex parte reexamination proceeding is faster on appeal than inter partes reexamination because only the patent owner has standing.

The appeal process can easily take more than four years (through the Federal Circuit) even though the PTO is trying to address the various delays. 

Courts need to assess carefully what is likely in the appeal process in coming to an studied estimate of the time of the reexamination proceeding.  Blanket pendency statements often made in stay motions and in arguments before judges need to be challenged under the given circumstances and status of the actual reexamination proceeding in question.

Summary

In summary, reexamination pendency must be considered with an informed eye.  Mere review of published PTO statistics does not provide a complete picture of reexamination pendency.  Moreover, the past is not necessarily indicative of the future.  Stay decisions are not (and should not be) routinely entertained in advance the first three milestones.  And thereafter, any stay (or denial of stay) should be flexible enough to respond to subsequent events and milestones at the PTO.  Finally, strategy decisions should take into consideration best- and worst-case scenarios, and be nimble enough adapt when the unexpected occurs.

Statutory Mandate of Special Dispatch

By statutory mandate, all reexaminations are to be handled with “special dispatch” [35 U.S.C. §§ 305 and 314].  Nonetheless, the CRU does prioritize pending reexaminations.  For instance, higher priority is afforded to reexaminations of patents involved in litigation.  Even higher priority is afforded when trial proceedings have been stayed pending the outcome of reexamination.  Further, if there is a concurrent litigation and the reexamination proceeding has been pending for more than one year, the PTO may further expedite a reexamination proceeding by setting a one-month or thirty day period for responses to Office Actions [MPEP §§ 2263 and 2663(L)].  Litigation notwithstanding, the highest priority is assigned reexaminations that have been pending for two or more years.

The rules require patent owners to notify the PTO of prior or concurrent proceedings and the CRU has dedicated paralegals that search litigation databases for case status periodically during the pendency of the reexamination proceeding [37 C.F.R. §§ 1.565 and 1.985].  The CRU thus assigns priority based on its own statistics and research, and based on patent owner notifications.  However, it is still critical for the parties to keep the PTO informed of the existence and status of related co-pending district court or ITC proceedings.  Pendency at the CRU has been the subject of much previous analysis and discussion.  Overall, the CRU has established an internal goal to issue a final office action or an Action Closing Prosecution within two years of the filing date of a request for reexamination.

Pendency before the CRU

All reexaminations are required by statute to be handled with “special dispatch” (35 U.S.C. §§ 305 and 314).  Nonetheless, higher priority is afforded to reexaminations of patents involved in litigation.  Even higher priority is afforded when trial proceedings have been stayed pending the outcome of reexamination.  The highest priority is assigned to reexaminations that have been pending for at least two years.  The rules require patent owners to notify the Office of prior or concurrent proceedings (37 C.F.R. §§ 1.565 and 1.985), and the CRU has dedicated paralegals that search litigation databases for the status of pending litigation during the pendency of the reexamination proceeding.  The CRU thus assigns priority based on its own statistics and research, and based on patent owner notifications.  Therefore, it is critical for the patent owner to keep the PTO informed of the existence and status of related co-pending district court or ITC proceedings.

Upon filing, reexamination requests first undergo review by the CRU staff to ensure compliance with the rules (37 C.F.R. §§ 1.510 and 1.915).  Failure to comply with the provisions may result in a Notice of Incomplete Request or Failure to Comply, vacating the filing date until a response is filed within 30 days to remedy any defects (Instructions Regarding Notice of Failure to Comply (PTOL 2077).  For instance, the staff will ensure that each reference cited by requester is used to support at least one proposed rejection.  Further, the staff recently began ensuring that the requester properly and affirmatively demonstrate that each SNQ is non-cumulative of the art previously considered during original prosecution or previous reexaminations.  Of the requests received in fiscal year 2010 Q1-Q3, 10% of both ex parte and inter partes requests were terminated during preprocessing by CRU staff for failure to comply with the requirements of 37 C.F.R. §§ 1.510 and 1.915 before even reaching an examiner.

If the reexamination request passes muster by the CRU staff, a notice of the request is made public in the Official Gazette.  When a request is deemed to satisfy all the requirements of the ex parte or inter partes rules (35 U.S.C §§ 510 (ex parte reexaminations) and 919 (inter partes reexaminations)), the filing date becomes the reexamination filing date.  Just because the notice of request is published in the Official Gazette does not necessarily mean that the reexamination request was satisfactory.  Roughly 10% of requests are later vacated by the examining panel for informalities.  While this number has fallen from roughly 15% in previous years, the authors have noted a recent uptick in denial rates based on the requester’s failure to adequately prove that the proposed SNQ is not cumulative to the art considered during original prosecution. 

Once a satisfactory request has been made, the CRU has a three-month deadline to issue a decision on the request based on whether a SNQ has been raised (USPTO Reexamination Operations Statistics Fiscal Year 2010, Quarter Ending June 30, 2010).  According to PTO operational statistics, the amount of time from filing the request to an order granting reexamination averaged 1.6 months for ex parte and 1.8 months for inter partes proceedings.  The amount of time from filing the request to an order denying the request averaged 1.7 months for ex parte and 1.1 months for inter partes proceedings.  While an order denying the request can be petitioned under 1.181 for review of the examiner’s determination, a substantive denial of this nature is often a strong indicator that the request will not move forward.

For ex parte requests, the grant starts a two-month window in which the patent owner may respond to the request.  In that response, the patent owner may amend claims or argue that the claims under reexamination are patentable.  If the patent owner elects to file a patent owner’s statement, then the third party requester may reply.  This is the only opportunity a third party requester gets to participate in an ex parte reexamination proceeding.  Most reexamination practitioners advise against filing a patent owner’s response for this reason.  For inter partes requests, CRU procedures suggest that a first Office action on the merits accompany the grant, but that is not required.  Overall, the CRU has established an internal goal to issue a final Office action or an Action Closing Prosecution (“ACP”) within two years of the filing date of a request for reexamination.  As the CRU works through its backlog, this goal is becoming more and more realistic.  According to operational statistics, the average amount of time from grant of a request to the first Office action is 5.8 months for ex parte and 1.8 for inter partes proceedings.  This reflects the CRU’s practice of seeking to mail the first Office action along with, or shortly behind, the order granting inter partes reexamination.  Thus, this milestone for inter partes proceedings is better approximated as 3.6 months from the date of filing to the first Office action (USPTO Reexamination Operations Statistics Fiscal Year 2010, Quarter Ending June 30, 2010).

Official statistics suggest that “overall pendency” is reflected by the average time from filing the request to issuance of a NIRC (the often cited duration of 27.4 months for ex parte and 34.8 months for inter partes proceedings), however, a range of scenarios confound this statistic.  First, averages lack the granularity to indicate reasons for issuance of a NIRC, a milestone that serves to notify the public of the final disposition of the claims, including circumstances where all claims have been canceled or abandoned by the patent owner.  Averaging together reexaminations prosecuted until finality and those defaulting due to lack of participation may also distort the result.  Second, any pendency bookended by issuance of a NIRC must exclude all proceedings pending on appeal.  Without understanding the amount of time expected from a first Office action to a final Office action or Right of Appeal Notice, the overall reexamination timeline remains ambiguous and situation specific.

Approximately 46% of reexamination requests involve the electrical/software/business method arts.  In addition, the mechanical arts make up around 31% and this number is growing.  While there may be a perception that reexamination is disfavored in the chemical/biological arts, over 23% of reexamination filings were in these arts (USPTO Reexamination Filing Data (June 30, 2010).  The lower number of requests in the chemical/biological arts likely mirrors current trends in the technology centers and the fewer overall number of issued patents in the chemical/biological fields.  Current pendency rates reflect the large number of reexaminations in the electrical arts.

Pendency before the Board of Patent Appeals and Interferences (BPAI)

Once prosecution closes, an appeal to the BPAI is available to the patent owner in ex parte reexamination and to both the patent owner and the third party requester in inter partes reexamination.  After hearing an appeal, the BPAI has a stated goal of then rendering a reexamination decision in six months.  In an April 2008 briefing on inter partes reexaminations, the Institute for Progress estimated the average pendency for an un-appealed inter partes reexamination as more than 3.5 years, and the expected pendency for appealed inter partes reexamination as at least 6.5 years (Reexamining Inter Partes Reexamination, Institute for Progress (April 2008)).

An independent survey of BPAI decisions rendered between January 1, 2007 and January 1, 2010 and the file histories associated with their reexamination control numbers revealed that (not inconsistent with official performance metrics for fiscal year 2009 provided by the BPAI – See Board of Patent Appeals and Interferences Performance Measures for Fiscal Year 2009) of the 173 ex parte and 15 inter partes proceedings in this sample, the time from docketing at the BPAI to a final decision averaged 4.5 to 6.5 months over the past three years.  Nevertheless, the median time from Notice of Appeal (or Right of Appeal) to docketing at the BPAI (representing the duration of briefing) averaged 18-20 months (Sterne et al., Appeals from the Central Reexamination Unit, 5th Annual Advanced Patent Law Institute USPTO-PV10, United States Patent and Trademark Office, Alexandria, VA (January 21, 2010)).

At present, the apparent BPAI bottleneck threatens to dwarf any pendency driven by the CRU or even briefing before the BPAI.  At least six or seven months can pass between the filing of a notice of appeal, the patent owner’s brief, the third party requester response (if inter partes), the examiner’s answer and subsequent replies.  In the inter partes reexaminations this period is often longer due to the time between Respondent’s Brief and the Examiner’s Answer.

To better approximate the briefing period and average pendency of reexaminations after a Notice of Appeal (or Right of Appeal), the file histories of all requests filed between January 1, 2006 and January 1, 2009 as of June 11, 2010 were analyzed (Public file histories were obtained from the Patent Application Information Retrieval (PAIR) system on June 11, 2010 and analyzed at their current stage of reexamination).  Of the 1,738 ex parte proceedings filed during this period, 375 had a Notice of Appeal with opening appeal briefs filed in 246 (66%) of proceedings.  Of the 246 appeal briefs filed, the pendency from Notice of Appeal to acceptance of the brief averaged 96 days, with a median of 62 days, and a range of 21-370 days.  Of those where acceptable briefs were filed, 149 had received an Examiner Answer in an average of 112 days, with a median of 99 days, and a range of 2-360 days. Of these, only 99 had been docketed at the BPAI.  The amount of time from the Reply Brief (if filed) to a notice of docketing averaged 96 days, with a median of 68, and a range of 6-598.  Notably, 122 of those reexaminations on appeal received a NIRC prior to any decision by the BPAI.

Similarly, of the 415 inter partes proceedings filed during this time period, 131 had a Notice of Appeal with opening appeal briefs filed in 95 (73%) of proceedings.  Of the 95 briefs filed, the pendency from Notice of Appeal to acceptance of the last proper brief averaged 162 days, with a median of 133 days, and a range of 60-351 days. Of those where acceptable briefs were filed, 30 had received an Examiner Answer in an average of 108 days, with a median of 77 days, and a range of 24-443 days.  Of these, only 17 had been docketed at the BPAI.  The time from the last Reply Brief to a notice of docketing averaged 159 days, with a median of 96 days, and a range of 46-521.  That this sample is limited reinforces the notion that inter partes appeals are less abundant than their ex parte counterparts, as described in Section II.G.  Only 10 of those on appeal received a NIRC prior to a decision by the BPAI.  

A rapidly growing backlog at the Board of Patent Appeals and Interferences (“BPAI” or “Board”) is perhaps the most closely watched pendency issue.  The backlog has continued in 2010. However, because the BPAI also falls under the statutory mandate of special dispatch, handling appeals from the CRU in the same way as appeals from the initial examining corps would result in impermissible delays.  Accordingly, the PTO has taken some recent steps to decrease pendency for appeals coming from the CRU.

For example, many appeals were bounced for non-substantive informalities such as failure to adhere to the PTO’s briefing rules, which are not always consistently applied.  Or even for failure of the examiner to initial every reference in an IDS.  For example, of the 1,738 ex parte proceedings filed during the period surveyed, 375 had a Notice of Appeal with opening appeal briefs filed in 246 (66%) of those on appeal.  Of the 246 appeal briefs filed, 75 (30%) received a Notice of a Defective Appeal Brief and only 99 have been docketed to date at the BPAI. Similarly, of the 415 inter partes proceedings filed during this time period, 131 had a Notice of Appeal with opening appeal briefs filed in 95 (73%) proceedings.  Of the 95 briefs filed, 39 (41%) received a Notice of a Defective Appeal Brief and only 14 have been docketed at the BPAI to date.  Critics argue that this appeal process in practice does not satisfy special dispatch.

To achieve consistency and streamline procedures for appeals in ex parte reexamination, the PTO announced in May 2010 that the BPAI’s Chief Judge (or his representative) will now have the sole responsibility determining whether appeal briefs comply with the applicable regulations. This BPAI review will be completed prior to forwarding appeal briefs to the examiner for consideration.  Previously, this task fell to the examiners.  The PTO expects to “achieve a reduction in ex parte reexamination proceeding appeal pendency as measured from the filing of a notice of appeal to docketing of the appeal by eliminating duplicate reviews by the examiner and the BPAI.”  The PTO also expects a further reduction in pendency because the streamlined procedure will “increase consistency in the determination, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs in ex parte reexamination proceeding appeals.”  It is unclear why this review procedure was not implemented for inter partes reexamination.  But given the state of pendency last year at this time, any action to streamline appeals from the CRU is generally welcomed by reexamination practitioners.

Requirements, Realistic Timetables, Statistics

A realistic timetable for an reexamination is a crucial data point for third-party requesters, patent owners and judges as they navigate the parallel universe.  For these reasons, we provide below some insight into external and internal PTO and CRU procedures, as well as the latest information regarding reexamination pendency.  Upon filing, reexamination requests first undergo review by the CRU staff to ensure compliance with the rules.  For instance, the staff will ensure that each reference cited by requester is used to support at least one SNQ.  Further, the staff recently began ensuring that the requester properly and affirmatively demonstrated that each SNQ is non-cumulative of the art previously considered during original prosecution or previous reexaminations.  If the reexamination request passes muster under the CRU staff, a notice of the request is made public in the Official Gazette.

When a request is deemed to satisfy all the requirements of the ex parte or inter partes rules, the filing date becomes the reexamination filing date [35 U.S.C §§ 510 (ex parte reexaminations) and 919 (inter partes reexaminations)].  Just because the notice of request is published in the Official Gazette does not necessarily mean that the reexamination request was satisfactory.  Roughly 10% of requests are later vacated by the examining panel for informalities.  While this number has fallen from roughly 15% in previous years, it’s noted a recent uptick in denial rates based on the requester’s failure to adequately prove that the proposed SNQ is not cumulative to the art considered during original prosecution.

Once a satisfactory request has been made, the CRU has a three month deadline to issue a decision on the request based on whether a substantial new question of patentability (“SNQ”) has been raised in the request.  For ex parte requests, the grant starts a two month window in which the patent owner may respond to the request.  In that response, the patent owner may amend claims or argue that the claims under reexamination are patentable.  If the patent owner elects to file a statement, then the third party requester may reply. This the only opportunity a third party requester gets to participate in an ex parte reexamination proceeding.  Most reexamination practitioners advise against filing a patent owner’s response for this reason.  For inter partes requests, CRU procedures suggest that a first office action on the merits accompany the grant, but that is not required.  Overall, the CRU has established an internal goal to issue a final office action or an Action Closing Prosecution (“ACP”) within two years of the filing date of a request for reexamination.

Once prosecution closes, an appeal to the BPAI is available to the patent owner in ex parte reexamination and to both the patent owner and the third party requester in inter partes reexamination.  After hearing an appeal, the BPAI has a stated goal of then rendering a reexamination decision in six months.  The apparent BPAI bottleneck notwithstanding, as yet there are no reliable statistics on the pendency of reexaminations appealed to the BPAI.

High Level Scrutiny by Judiciary and Legislature

In an April 2008 briefing on inter partes reexaminations, the Institute for Progress estimated the average pendency for an un-appealed inter partes reexamination as more than 3.5 years, and the expected pendency for appealed inter partes reexamination as at least 6.5 years.  Chief Judge Paul R. Michel commented on the ability of the PTO to handle post-grant proceedings in an Address at the Federal Trade Commission Hearing on the Evolving IP Marketplace, held on December 5, 2008:

“To me, the proposed alternative for weeding out bad patents is convincing.  Can we really get a faster, better, and cheaper review of challenged patents at the PTO than in the courts?  Experience with the existing PTO reexamination procedures raises doubts.  And the PTO is already overwhelmed by ex parte examination with average pendencies over three years, in some arts, far longer.  Is it realistic to expect the PTO to be able to conduct a new form of inter partes reexamination faster and cheaper than the courts?  And more accurately?  Unless its new procedures, competencies, and powers can be clearly defined, how will we know what consequences would follow?  How will we know this is not a mirage in the desert that looks like an oasis, but has no water?”

At present, the apparent BPAI bottleneck threatens to dwarf any pendency driven by the CRU or even briefing before the Board.  However, some practitioners note that at least seven months can pass between the filing of a notice of appeal, the patent owner’s brief, the third party requester response (if inter partes), and the examiner’s answer.  In the inter partes reexaminations we analyzed, this time period is often longer due to the period of time between Respondent’s Brief and the Examiner’s Answer [See e.g., 95/000,006 and 95/000,017 (5 months between Respondent’s Brief and Examiner’s Answer); and 95/000,018 (18 months between Respondent’s Brief and Examiner’s Answer)].  It is noted that these early filed cases may not be representative because each of these reexaminations was filed prior to the institution of the CRU.  At this time, there is no way to determine whether the CRU will increase the speed of the appeal briefing process.

Operational Statistics and Pendency

The USPTO releases quarterly operational statistics, available here. According to these statistics, overall pendency is calculated from the filing date accorded (e.g. upon meeting the requirements of 37 CFR 1.510 or 1.915) to issuance of a certificate. Notice of Intent to Issue a Reexamination Certificate (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 the natural resolution of all outstanding issues of claim patentability.

Preprocessing

The average time from filing of the request to assignment of a reexamination control number; the request undergoes review of compliance with 37 CFR 1.510 and 1.915; a Notice of Incomplete Request for Reexamination may be issued during this time, which provides 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

The average time it takes to receive substantive grant or denial of request by an Examiner at the CRU; Orders Granting or Denying a request are not determinations of claim patentability, rather they decide whether it has established the existence of at least one SNQ based upon prior patents and or printed publications (MPEP 2247.01).

Grant to FOAM

The average time between grant of a request and receipt of the First Office Action on the Merits (FOAM); as noted above, Granting of Reexamination is not a determination of claim patentability, it means that one or more claims of a U.S. Patent 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).

FOAM to NIRC

The average time from receipt of a FOAM to Notice of Intent to Issue a Reexamination Certificate (NIRC); the NIRC 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; if the reexamination is “abandoned” a NIRC automatically issues.

NIRC to Certificate

The average time from NIRC to publication of the certificate in the Official Gazette (OG); notice to the public regarding issuance of a Reexamination Certificate is announced in the Official Gazette (MPEP 2691) under Granted Patents.

Concepts