Wednesday, September 14, 2011

Ex parte vs. inter partes: which is the dominant life form?

In a post dated Sept. 13, 2011 at patents4life about the significant changes (and non-changes) introduced by HR 1249, one finds the text:

3. S. 302-307 – “Old” ex parte reexamination is not affected by Bill. (But, remember, ex parte reexamination is essentially unused now.)

But in the weekly update of re-exams from InvnTree , ex parte outnumbered inter partes 2 to 1!!

1 5,629,867 90/011,812 Jul. 27, 2011 "Scott Charles Richardson, Brevetto Law Group,
PLLC., Quincy, IL
" Ex Parte
2 5,809,246 90/011,813 Jul. 28, 2011 "Scott Charles Richardson,
Brevetto Law Group, PLLC., Quincy, IL
" Ex Parte
3 5,944,445 90/011,829 Aug. 2, 2011 "USA FloodAir Vents, LTD., Daniel P. Burke, Daniel P.
Burke & Associates, PLLC., Oyster Bay, NY
" Ex Parte
4 6,891,744 90/009,922 Aug. 5, 2011 "Blaise
Mouttet, Arlington, VA
" Ex Parte
5 7,078,128 90/011,816 Jul. 29, 2011 "Garth M. Dahlen, Birch Stewart Kolasch &
Birch, LLP., Falls Church, VA
" Ex Parte
6 7,763,880 90/009,924 Aug. 5, 2011 Blaise Mouttet, Arlington, VA Ex Parte
7 6,711,426 95/001,688 Jul. 28, 2011 "Thermo Fisher Scientific, Inc.; (Att'y
Is: Michael C. Staggs, Thermo Finnigan, LLC., San Jose, CA), Real Party in
Interest: Same As Third Party Requester
" Inter Partes
8 7,431,650 95/001,698 Jul. 28, 2011 "Genesis Gaming Solutions, Inc.; (Att'y Is: Jeffrey A.
Tinker, Winstead, PC, Dallas, TX), Real Party in Interest: Same As Third
Party Requester
" Inter Partes
9 7,991,680 95/001,700 Aug. 15, 2011 "Third Party Requester: SAP America,
Inc. (Att'y Is: Garth A. Winn, Klarquist & Sparkman, LLP., Portland, OR),
Real Party in Interest: Same As Third Party Requester
" Inter Partes

**With the change in threshold that will exist for the new "inter partes review" (but not for ex parte),
one wonders if ex parte re-exams will become still more dominant?

**from Sterne Kessler:

The standard for the Director to grant an inter partes reexamination will change on the date of enactment from the current standard requiring a requestor to show a “substantial new question of patentability” to a new standard requiring a requestor to show “that there is a reasonable likelihood that the requestor would prevail with respect to at least 1 of the claims challenged in the request.” See Sections 6(c)(3)(A) and (B) of H.R. 1249.

**Of expedited review, note some statistics from the Green Technology Pilot Program:

According to the most recent statistics made public by the USPTO, a total of 1595 petitions have been filed since December 8, 2009, of which 790 have been granted. As of Nov. 17, 2010: 94 patents with granted petitions have been issued under the pilot program.

So granted/petitioned is 94/1595 = 6%

Refer to USPTO announces extension and expansion of program for fast reviews of "green" patent applications

Of prioritized examination in HR 1249:

The patent reform legislation (H.R. 1249), passed by the House and awaiting a Senate vote, includes some new fee provisions that would go into effect on the date of enactment. Effective 10 days after enactment is a $4,800 fee for "Prioritized Examination," corresponding to the USPTO's "Track I" rulemaking issued as final April 4, 2011 (76 Fed. Reg. 18399) but indefinitely postponed April 20, 2011 (76 Fed. Reg. 23876) for funding reasons. See 11(h) of House-passed H.R. 1249, p. 105. Some features of the prioritized examination:

PTO Director may limit the number granted.
No more than 4 independent claims and 30 total.
Unless changed, no more than 10,000 prioritized examinations may be granted per year.
Small entities will pay $2,400.
No fee diversion of these funds to non-PTO government projects.
Provision effective 10 days after enactment

From patents4software:

Under a new 37 C.F.R. 1.102(e), prioritization is available only for an original and complete utility or plant nonprovisional application that contains or is amended to contain no more than four independent claims, no more than 30 total claims, and no multiple dependent claims.  The goal is to provide a final disposition within twelve months of an application’s receiving prioritized status.

Text in the Federal Register [76 FR 18399 (April 4, 2011)] includes:

To maximize the benefit of prioritized examination, applicants should consider one or more of the following:

(1) Acquiring a good knowledge of the state of the prior art to be able to file the application with a clear specification having a complete set of claims from the broadest to which the applicant believes he is entitled in view of the state of the prior art to the narrowest to which the applicant is willing to accept;
(2) submitting an application in condition for examination;
(3) filing replies that are completely responsive to the prior Office action and within the shortened statutory period for reply set in the Office action; and
(4) being prepared to conduct interviews with the examiner. A description of what it means for an application to be in condition for examination is provided at MPEP § 708.02(a) (subsection VIII.C).

See also:


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