Patent Law

In August 2008, Messrs Baluch and Maebius of Foley & Lardner published an interim report on the results of inter partes reexamination proceedings. At the time of their writing, however, only 30 inter partes reexaminations had been pushed-through to conclusion with a reexamination certificate. In the past year, that total has more than doubled to 73 issued reexamination certificates.

Of course, the main point about inter partes reexaminations is that the process can be incredibly slow if either party pushes. Only about 50% of the inter partes reexaminations filed 2001-2005 have been completed either through issuance of a reexamination certificate (on the merits) or procedurally terminated. Overall, the reexamination certificates took an average of 37.5 months to issue (median of 34.4 months). When all is said and done, this pendency will be much longer since the slow and/or hotly disputed cases are all still pending. Only one (1) of the completed cases received a BPAI decision (all claims were cancelled after BPAI affirmed) and no completed cases have received a court decision.

Results of the reexamination certificates: Inter partes reexaminations continue to show promise as a mechanism for "killing" patent claims. Of the 73 issued reexamination certificates, 60% (44) cancel all the claims and only 12% (9) confirm all the original claims as patentable. The remaining 27% (20) change the claimset in some way. For the 19 inter partes reexamination certificates issued on patents with co-pending litigation, 42% (8) resulted in all claims being cancelled; 5% (1) confirmed all claims as patentable; and 53% (10) changed the claimset in some fashion.