Wegner on Reexamination Reform

According to Hal Wegner's "Dear Jon letter" on patent reform, much more important than getting the average pendency down and eliminating the four-plus year reexaminations is that the Office immediately tackle the clearly most important reexaminations: Reexaminations that are filed by a losing party (or his strawman) after a full trial on the merits, after years of work on both sides, millions of dollars in fees by each side, and countless hours spent by a trial court, its staff and a jury.

He proposes an immediate fix to the most important reexamination proceedings that is available in the gap between now and the effective date of any new legislation:

We now have roughly sixty APJ’s who are eager and willing to take up the
post-grant review system that may pass Congress as early as next year. In the
meantime, why not designate two (2) of the most problematic reexaminations to
each APJ, immediately, and have the APJ clear up the 120 most serious
reexamination cases. If this were done, all of the reexaminations that have
generated so much notoriety to the system could be disposed of quite promptly.
Within the category of the Top 120 Cases there could be included the longest
pending reexaminations.

APJ’s would also streamline the process through ad hoc innovations. For example, we are now experiencing "paperless" interference proceedings that have been established through ad hoc orders of APJ’s. Only APJ’s have the security in their positions to innovate in such a manner, to the great benefit of the system (and also providing a pathway for the Office at large).

APJ’s should also be assigned all new reexaminations before the Order stage where there has been either (a) a prior reexamination proceeding filed; or (b) there is concurrent (or prior) litigation on the patent. Examiners are too often paralyzed into a default grant of an Order, when in fact there is no substantial new question of patentability. Only an APJ will have the confidence to deny a reexamination order in a case within these categories, which would greatly streamline the work of the Office.