Tuesday, January 03, 2006

SHOULD THE USPTO COMMISSIONER'S OFFICE BECOME MORE INVOLVED IN CHALLENGING NOTORIOUS "BAD" PATENTS? One of the most significant, yet least understood powers vested in the USPTO is the ability to order reexaminations sua sponte.

Under 35 U.S.C. 303, the Commissioner, at any time during the period of enforceability of a patent, may determine whether a substantial new question of patentability is raised by patents or printed publications which have been discovered by the Commissioner or which have been brought to the Commissioner's attention, even though no request for reexamination has been filed (see 37 C.F.R. 1.520).

Normally requests from outside the USPTO asking that the Commissioner undertake reexamination on his own initiative will not be considered.

The decision to order reexamination at the Commissioner's initiative is normally made by the Deputy Assistant Commissioner for Patent Policy and Projects after a review of all the facts concerning the patent. It may be made by the Commissioner of Patents and Trademarks, Deputy Commissioner or Assistant Commissioner for Patents. The number of such Commissioner initiated orders is expected to be very small.

Also, if an Office employee becomes aware of an unusual fact situation in a patent which he or she considers to clearly warrant reexamination, a memorandum setting forth these facts along with the patent file and any prior art patents or printed publications should be forwarded to the Deputy Assistant Commissioner for Patent Policy and Projects through the supervisory chain of command.

If an order to reexamine is to be issued, the decision is prepared and signed by the Deputy Assistant Commissioner for Patent Policy and Projects, and the patent file is forwarded to the Reexamination Preprocessing staff for preparation of the reexamination file and Official Gazette notice.

While most practitioners understand this policy in principle, no one (outside the USPTO) really knows how prior art is "raised" to the Commissioner's attention, or how Office employees "become aware" of facts warranting reexamination.

As far as we know, there is no special office within the USPTO that is charged with actively monitoring such things. Nevertheless, recent evidence suggests that someone in the patent office is doing just that. It is no coincidence that the Commissioner ordered reexams in the cases of Eolas, NTP and even some Ronald Katz patents, right when each of them were in the thick of litigation. Did they decide to act after reading news reports? After attending an IP seminar on patent trolls? No one can tell. But it certainly appears that the more high-profiled a patent becomes, the greater the likelihood will be that the USPTO will scrutinize the patent.

The Commissioner will never publicly comment on how a decision was made to reexam a specific patent. But it would seem that this is some valuable information that the patent public needs to know. Unlike 3rd-party requests, where the requester lays out reasons for invalidating specific claims, commissioner-ordered reexaminations appear almost out of thin air. And when they happen, the rest of us can only wonder what took place behind closed doors.

It is understandable why the USPTO shouldn't make such reexams a regular occurrence: it places additional burdens on an already-overtaxed examining corps, and potentially taints a weak prosecution history for future defendants looking to capitalize on this weakness during litigation (and taking a cynic's view, this would also forfeit thousands, if not millions, of dollars collected in the USPTO through reexamination fees).

On the other hand, the current rate of commissioner-ordered reexaminations is extremely low (around 2%). It is unlikely that there would be any meaningful impact if the rate were increased, say, to 3, 4, or even 5%. Also, the USPTO could share databases with the district courts (like the E.D. Texas, for instance) to identify potentially abusive litigants and create a "most wanted" list within the Office, similar to that created by the EFF.

While the USPTO should strive to maintain a neutral position on all granted patents, there are certain cases where defective examinations have allowed patentees to exploit loopholes in the prosecution to the detriment of the general public. A poorly-examined patent may not mean anything standing on its own, but when that patent is dragged through the litigation process and used to submit dozens, if not hundreds of defendants, the PTO should at least be aware of the extent that this is happening with regard to specific patents.

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