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Archived updates for Tuesday, October 23, 2007

Reexamination Overview and Cry for Reform

In "Patent Reexamination and the Crossover with Litigation" Rajiv P. Patel offers (via PLI's "Lawyer's Toolbox" newsletter) an overview of patent reexamination and how it can impact litigation from both plaintiff's and defendant's points of view.

At the same time, Professor Hal Wegner is once again calling for reform of the patent reexamination process in his latest paper, which he breaks down as follows:

Executive Summary: The PTO should immediately reform the reexamination system – both ex parte and inter partes – so that all reexaminations where there has been or is previous or concurrent infringement trial litigation should be handled with strictest attention by the highest level PTO examining official designated as Examiner and under "special dispatch" that is not only desirable but also required by statute.

The Ten Year Bleak House Reexaminations: The average reexamination that
reaches a decision at the Federal Circuit has a life from first filing until
issuance of the reexamination certificate on the order of ten (10) years, which
is attributable in part to a difficulty that some examiners have in making final
decisions in "hot" cases and the possibility of review by the Board – which may
enter its own grounds for denial.

The Zero Record for the PTO Inter Partes Reexaminations: To date, the 1999 inter partes reexamination law has produced no appeals to the Federal Circuit (at least insofar as a check on October 22, 2007 on Westlaw ALLBRIEFS). Neither has there been even one final opinion from the Board in such a case (insofar as FIP-PTO accurately reflects any inter partes reexamination decision). There have been two (2) Board opinions in such cases, but neither was a final decision – the Board in each case finding that the Examiner below had done an incomplete job, necessitating further consideration.

The Translogic Cases – Yet Another Example of PTO Case Management: The recent Translogic cases represents perhaps the best recent examples of precisely why the reforms suggested in this paper should be adopted – as explaind in more detail in the attachment.

"Inter partes reexamination is a procedure that can be made strong and effective, if and only if the PTO reallocates a very tiny sliver of its mind-blowing nearly $ 2,000,000,000.00 annual budget to this extremely important area of practice," grouses The Good Professor. "If there is a strong and effective inter partes reexamination system in place, this would render moot much of the concerns now before Congress in the various patent reform proposals." His lsuggestion:
  • "The best solution would be to designate an Administrative Patent Judge to handle an inter partes reexamination from the beginning – and then have this judge be a part of any appellate panel within the PTO."
  • "A second solution is to hire new "super examiners" drawn from already successful outside counsel who would like to "give back" to society to handle individual inter partes reexaminations. Such "Special Master Examiners" should be appointed to the corps"
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