USPTO Publishes Latest Reexamination Statistics
The USPTO published the most recent statistics on inter-partes and ex-parte reexaminations, and both reports show that reexaminations continue to grow in popularity, and continue to be effective weapons for challenging validity.
Ex-Parte Reexamination
Ex-parte filings continue to grow - 2009 is on pace to almost double the number of filings from 5 years ago:
2002 - 274 filings
2003 - 392 filings
2004 - 441 filings
2005 - 524 filings
2006 - 511 filings
2007 - 643 filings
2008 - 680 filings
2009 - 481 filings (through 6/09)
Of these filings, 31% are known to be in litigation. Just as before, reexamination requests are overwhelmingly granted - currently 92% of requests are pushed forward towards full reexamination proceedings. On pendency, ex parte reexamination requests have an average pendency of 25.1 months, and a median pendency of 19.1 months.
Requesters continue to be favored during reexamination. Of all requests, only 25% of reexamined patents emerge with a certificate having all claims confirmed. 64% of reexamined patents emerge with claim changes, and 11% emerge with all claims canceled.
Inter-Partes Reexamination
Inter-partes reexamination requests continue to grow at a much higher pace - the number of requests through June 2009 already exceed the total number of requests from the previous year:
2004 - 27 filings
2005 - 59 filings
2006 - 70 filings
2007 - 126 filings
2008 - 168 filings
2009 - 195 filings (through 6/09)
Of these requests, 66% of the challenged pates are known to be in litigation. Currently 95% of inter-partes requests are granted. On the pendency side, the news is not good. Currently, the USPTO claims an average pendency of 36.1 months, and a median of 33.o months. This is up from December 2008, where the average and median pendencies were 34.9 and 32.5 months respectively. It is worth noting that an earlier study by the Institute for Progess found that actual pendencies for inter partes reexaminations are closer to 43.5 months, and may be high as 97 months (!) (link).
Requester success rates are now higher than ever - only 5% of challenged patents emerge with all claims confirmed. 35% of challenged patents emerge with claim changes, and 60% of challenged patents have all claims canceled or disclaimed. In December 2008, 9% of the challenged patents had all claims confirmed, with 21% having claim changes and 70% having all claims canceled or disclaimed.
- Download USPTO, Inter Partes Reexamination Filing Data - June 30, 2009 (link)
- Download USPTO, Ex Parte Reexamination Filing Data - June 30, 2009 (link)
- See also Reexamination operational statistics - FY 2009 (through 6/30/2009) (link)
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The increase in reexamination procedures is likely due to the increasing costs of litigation and the fact that reexamination can often be a cost-effective weapon. I'm curious if the statistics concerning success by the requester has changed significantly in any way.
I totally agree with the above comment... further, given the amazing success rate of re-exam, I might be counseling my clients to try it more!
"I totally agree with the above comment... further, given the amazing success rate of re-exam, I might be counseling my clients to try it more!"
Thanks for the laugh! It's been too long a night. (Hey if you ever need to enforce a patent and the infringer presents you with good prior art, that's an excellent time to run to the PTO for a non-adversarial reexam. Hopefully you can get the same Examiner who issued it to do the reexam and prove he wasn't wrong.... It's like gold-plating your patent.)
I also agree with the above anonymous comment. At least, in certain situations.
This may seem surprising when “anonymous” seems to suggest that even the mere consideration of using reexamination is foolish waste of time and effort. If “anonymous” really intends to go that far with his statement, I respectfully disagree.
Having worked with some famous (some say infamous) contingency fee patent litigators, I am well aware that most attorneys would welcome you to provide prior art in a reexamination, instead of using it for the first time at trial. I understand the reasoning and know that reexaminations are a strategy that needs to be carefully considered. Indeed, I have worked on reexaminations that were filed on behalf of a patent owner with the prior art provided by a competitor.
Nevertheless, you always have to consider the particular facts and circumstances to determine a particular strategy in any given situation. When considering whether or not to use reexamination proceedings, you would want to consider the patent claims, the prosecution history, the specification, the prior art of record, and the new "invalidating" prior art that you might bring to the attention of the patent office. In whose name would the reexamination be filed and can it could easily be traced back to your client? How good is the prior art and does it anticipate one or more claims, or just raise another obviousness argument?
Is your client in a situation where they want to make (but have not yet made) a product that a competitor might assert is covered by their patent, but willing to walk away from the project for the cost of an investment in a patent litigation? How much funds are available to fund any particular strategy? Is there already litigation? If so, how likely is it that the judge will stay the litigation? Who is the patent owner and what might a reexamination do to their strategy? Is your client trying to buy time before declaring bankruptcy? Perhaps you might even consider filing a reexamination (and even leave some of your prior art in reserve if you want) in an effort to obtain additional comments that can be used for claim construction purposes.
I’ve represented a defendant in the Eastern District of Texas, where co-defendant's counsel (a very large law firm) withdrew (I suspect it was because the co-defendant was no longer able to afford the cost). The only reason the co-defendant did not get “hosed” was because we obtained a favorable claim construction and the plaintiff filed a motion to withdraw their claims of infringement. Perhaps reexamination should have been considered as a possible option, if they actually could not afford the cost of defending the litigation.
Personally, I’ve always been a fan of considering various possibilities in an attempt to reach a solution to a given problem.
Further to Hal's comment, there could also be situations where attorneys do not want to provide prior art in a reexamination (vs. for the first time at trial) because they do not want to open the door for competitors to get into the field.
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