Monday, July 07, 2008

USPTO: Reexaminations May Not Be "Specially Expedited"

Reexamination Control No. 90/008,972: After a Reexamination Request was granted on US Patent 5,253,341, the patentee filed a petition to suspend the rules under 37 C.F.R. 1.183 so that the reexamination proceedings would be handled on a "specially expedited basis" in light of concurrent litigation, and in light of the fact that an earlier reexamination on the same patent took seven years. While recognizing that 35 U.S.C. section 305 authorizes all reexamination proceedings to be conducted "with special dispatch," the Office noted that "The Office does not treat ex parte reexamination proceedings on a 'specially expedited basis.'"

From the PTO:

Although the petitioner patent owner points out that this is a reexamination proceeding having concurrent litigation, the Office does not take a reexamination proceeding out of tum based solely on the existence of concurrent litigation. Current statistics (through December 31, 2007) show that 26% of the ex parte reexamination requests filed and 52% of the inter partes reexamination requests filed involved patents that were also subject to litigation. Thus, it does not appear that the existence of concurrent litigation involving a patent for which reexamination has been requested presents an extraordinary situation. In addition, although the petitioner patent owner states that the first reexamination proceeding took more than seven years to conclude, the '972 reexamination stands on its own merits and will be conducted with special dispatch within the Office.

It is to be noted that to treat a given ex parte reexamination proceeding on a "specially expedited basis," e.g., ahead of other ex parte reexamination proceedings filed earlier than that given ex parte reexamination, (and potentially ahead of other prior filed inter partes reexamination proceedings as well) , would be to relegate some of the prior filed reexamination proceedings to an inferior status in derogation of the statutory mandate that such proceedings be conducted with special dispatch within the Office. It is further to be noted that the '972 reexamination proceeding is not the only reexamination proceeding pending in the Office that is the subject of one or more litigation proceedings.

Nevertheless, the PTO provided the patentee with an alternative, in case the reexamination proceeding took too long:
If, during subsequent prosecution of the '972 reexamination proceeding, petitioner patent owner feels that prosecution is being inordinately delayed, a petition under 37 CFR 1.181 directed to the Director of the Central Reexamination Unit requesting the exercise of supervisory authority would be the appropriate vehicle to address the situation on an as-needed basis in each individual instance. Waiver of the rules would not be necessary.

Download a copy of the PTO decision here (link).

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