Who at the USPTO Will Fix Inter Partes Reexaminations?

The American Inventors Protection Act, signed into law on November 29, 1999, made a number of landmark patent reforms, including the establishment of an inter partes reexamination procedure.

Initially shunned by 3rd parties, inter partes reexamination practice has grown considerably in the last few years: in 2003, only 23 requests were filed in the USPTO; in 2007, 126 requests were filed (see PTO statistics here).

One very disturbing fact, which has received scant attention, is this:

To date, the BPAI has not issued a single final decision on any inter partes reexamination.

Recently, the BPAI issued Watson & Chalin Manufacturing, Inc. v. Hendrickson USA, L.L.C., 2008 WL 345059 (PTO Bd. App. & Int. 2008), which, as noted by the good professor Hal Wegner, is only the third inter partes decision in history (presuming that Westlaw's reporting is complete). And despite the statutory requirement for "special dispatch", the reexamination languished in the PTO for 5 years (since 2003); the other two BPAI inter partes decisions (Lobo v. Congoleum and NEC v. Entegris) had to wait 4 years to get their decisions.

Why weren't the decisions "final"? In each case, the Board "played examiner" and instituted new grounds of rejection. Because a new rejection is introduced, the decision cannot be final, and cannot be appealed to the CAFC until there has been a rehearing at the Board, or prosecution is reopened.

This is worrisome stuff. Considering that post-grant review is such a crucial part of patent reform, someone at the PTO needs to explain what policies and procedures the Office intends to implement to avoid having the same problem when (if?) patent reform is enacted.

Read the complete story from Hal Wegner (link)