Patent Law

In an earlier post I indicated my suprise that courts continue to ?grant stays of litigation pending re-examination ? especially inter partes reexaminations which tend to be incredibly slow.? In thumbing through Matthew Smith?s new book on Inter Partes Reexaminations, the following statements caught my attention and reaffirmed my conclusion that stays do not make sense here:

?A fully contested proceeding, therefore, could consume six to seven years. . . . [However t]here is as yet no reliable data available to estimate the total time of the proceeding. As of the end of 2008, the only cases with issued reexamination certificates were those in which technical mistakes were made, or in which at least one party chose not to contest the proceedings.?

The first request for inter partes reexamination was made in 2001 and still no contested inter partes reexamination has completed its course. Mr. Smith?s suggestion of ?six to seven years? may well be optimistic.

Part of the Patent Reform Act of 2009 would be to take inter partes reexaminations out of the hands of the examination corps and put it under the direction of ?an administrative patent judge.? Under the proposal, the PTO is given authority to spell out the actual procedures. Of course, the Board of administrative patent judges has been handling this sort of trial-in-the-first-instance for many years in the form of interference proceedings. The board already has a trial division that is ready to go. Although there are some outliers, interference proceedings are generally terminted within less than two years. For the Oct-Dec 2009 period, 13 interference proceedings were terminated with an average pendency of 9.5 months. 100% of those cases were terminated in less than two years. See 37 C.F.R 41.200(c) (?Patent interferences shall be administered such that pendency before the Board is normally no more than two years.?)

Notes:

• Matt Smith?s book is online and free (1.5 mb). Smith is a patent attorney at Foley & Lardner's DC Office.