New Statistics on Inter Partes Reexamination

Matthew A. Smith, adjunct professor at the George Washington University Law School, and Foley & Lardner attorney, has published the treatise "Inter Partes Reexamination," which provides an in-depth analysis of Inter Partes Reexamination practice before the United States Patent & Trademark Office.

The 270-page paper (w/ 1200+ footnotes) looks at practically every aspect of inter-partes reexamination, including filing of papers and service, briefing, timing, and appeal.

How successful are inter partes reexaminations?

Overall, all claims of a patent were rejected in just under 50% of cases. All independent claims were rejected in about 65% of cases. All independent claims were either rejected or amended in about 72% of cases. Some independent claims survived unscathed in about 30% of cases. All original independent claims were confirmed in 14% of cases.

And with regard to timing,

It is as yet difficult to estimate how long a fully contested inter partes reexamination will take, because no fully contested proceeding has concluded. It appears, however, that Office-level practice to a Right of Appeal Notice is taking on average at least two years, and more likely three years. If fully contested, appeals to the Board of Patent Appeals and Interferences and Court of Appeals for the Federal Circuit could take another three to four years. A fully contested proceeding, therefore, could consume six to seven years.

There is a lot of information in this paper, and is highly recommended for anyone dealing with inter-partes reexaminations.

Read/download a copy of the paper here (link)

Comments are solicited, which may be shared directly with Prof. Smith: msmith@foley.com