Heralded as an "alternative to litigation," recent research strongly suggests that Inter Partes Reexamination has become "an augmentation of litigation strategy rather than an alternative" (more than half (52%) of patents in inter partes re-exams are known to be in litigation during that time). People from the recently formed Institute for Progress (IFP) have published a study titled "Reexamining Inter partes Reexam" to look more closely at the statistics, and what they found doesn't look good.
Since 2003, Inter Partes Reexams have experienced a sixfold increase, and the PTO has acknowledged this increase, and promised early on that steps would be taken to properly accommodate requestors and patent holders to reduce pendency. In December of 2007, the PTO attested that the average pendency of Inter Partes Reexams was 28.5 months. However, according to the IFP study, the 28.5 month pendency was based mostly on reexaminations where the patent holder failed to respond to the Office Action.
When all Inter Partes Reexams are analyzed, the IFP study concludes that "[w]hile mathematically accurate, the pendency statistic provided by the USPTO is highly misleading . . . It takes significantly longer to get to a resolution if the patent holder participates in the process."
According to the study:
Based on our calculations, it takes more than 3 ½ years (43.5 months) for the average case to proceed through the basic reexam process to a final conclusion – this assumes that the case is not appealed to the BPAI or beyond. A 95% confidence interval suggests a range of between 34 and 53 months for average pendency for an un-appealed inter partes reexam . . . average pendency (assuming no “rework” by the patent office and no secondary appeals to the BPAI, the Federal Circuit, or the Supreme Court) is 78.4 months – slightly longer than 6.5 years. A 95% confidence interval suggests an average pendency for appealed cases (again, assuming no rework) is between 5 and 8 years (60-97 months)! Given that the only three inter partes reexam cases that have received a BPAI decision all require further “rework” and are subject to further appeal, these estimates may be highly conservative.Other findings in the comprehensive study conclude:
The inter partes reexamination process is not linear: While the majority of patents follow the main sequence (Request ---> Grant ---> Non-final Office Action ---> ACP ---> Reexam Certificate), some cases skip steps, and others repeat steps multiple times.
One-quarter of all inter partes reexam decisions are appealed, but none has ever proceeded through appeal to the end of the process: Through mid-April 2008, only nineteen cases have ever proceeded past the Notice of Right to Appeal. Of these, approximately one-quarter (5 cases - 26%) have been appealed to the BPAI, one case (~5%) went back for another Action Closing Prosecution, and the remaining 13 cases (68%) moved on to “Intent to Issue a Reexam Certificate."
The study concludes:
The inter partes reexam process requires special attention by the U.S. Patent Office. At present, the time to complete these cases far exceeds the expectation of “special dispatch” embodied in the patent statute. Federal judges, administrative law judges, and litigants should take special note of these facts as they can significantly impact the progress of patent litigation.
Download a copy of the study's report here.
Download the research statistics accompanying the report here.
Hat tip: Joff Wild