Thursday, November 13, 2008

Wegner: 10 Steps to Reform Inter Partes Reexamination

Currently, one of the most significant flaws of inter partes reexamination is that the PTO has failed to meet the "special dispatch" statutory mandate to conclude all reexaminations within 12-18 months from filing. Since the beginning of inter partes reexaminations, there has never been even one merits appeal to reach the Federal Circuit in an inter partes reexamination.

So what can be done? Hal Wegner has circulated a proposal for reform that borrows in part from Japan's post-grant review system, where the entire process (up to a judicial appeal) averages about 7 months. The following is his 10-step proposal:

(1) Allow the Board to control all parts of the proceeding - by empowering the Board to oversee the proceedings, needless "ping-ponging" between the Board and the examiner may be eliminated.

(2) Enable electronic filing on a special website

(3) Make requester propose the first action, and limit the proceedings to the request - make the examiner more of a "judge" than an examiner. Issues for reexamination will be simplified by limiting review to only the issues raised by the requester.

(4) Make requester responsible for initial presentation of evidence - declarations, tests, etc. should be filed initially by requester. Later evidence may be allowed, but only in response to issues raised by patentee.

(5) Patentee's Response and Order - patentee may contest the order or waive; after 3 months examiner issues requester's office action, or dismisses - no new prior art searching!

(6) Patentee's First Action Response - the first action response should be the main - and perhaps only - opportunity for the patentee to amend or present new evidence via declaration.

(7) Requester's Main Response - one month from patentee's response to add counter-arguments. When new issues are presented, this may be the first (and perhaps only) time to challenge new issues raised by patentee.

(8) Examiner's Final Decision - as a judge, the examiner should conclude proceedings on the specific challenge. If examiner agreed in toto with either party, he/she may simply adopt the party's statement. Alternately, the examiner may provide a brief statement explaining his/her viewpoint.

(9) Appeal - appeals should be expedited; complex issues shoudl trigger early involvemenet by the Board

(10) Reexamination e-Certificate - no paper publication will save time

Read Hal's 10-step proposal in greater detail here.

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