USPTO Warns Practitioners On Abusive Filings In Patent Reexamination


The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

On January 10, 2011, I co-chaired PLI’s Reissue & Reexamination Strategies and Tactics with Concurrent Litigation 2011. Mr. Kenneth Schor, Senior Legal Adviser of the USPTO’s Office of Patent Legal Administration (OPLA) participated and presented a very informative lecture on proper petition practice in patent reexamination.

Mr. Schor made several points of great interest to all post grant practitioners namely:

1) It is improper to oppose many petitions in inter partes reexaminations or provide sur-replies to properly opposed petitions;

2) Improper petitions will be referred to the Office of Enrollment & Discipline (OED), and

3) Abusive petition practices are believed to be aggravating a growing petition inventory.

Below is a chart taken directly from Mr. Schor’s slides demonstrating the growing petition crisis:


As clearly depicted in the chart, petition inventory is exploding. As inter partes patent reexamination filings begin to approach ex parte patent reexamination filing rates, the petition problem is expected to continue to tax USPTO resources.

Mr. Schor emphasized that petitions that oppose discretionary decisions of the Office, such as whether or not to grant an extension of time to a Patentee, are wholly improper. I encourage practitioners to register for the next live presentation of this material set for February 4th in New York City, webcast available thereafter.

Tags: , , , , ,

One Response to “USPTO Warns Practitioners On Abusive Filings In Patent Reexamination”

  1. patent_litigation says:

    I’m glad that someone is drawing attention to this issue. Abuse of reexamination, with harassing purpose or result, is indeed a growing problem in patent litigation (and one that could well be aggravated if the SCOTUS does rule in favor of Microsoft over i4i, thereby weakening the traditional presumption of patent validity). Moreover, such abuse unjustifiably taxes the resources not only of patentees, but also of the USPTO.

Leave a Reply

You share in the PLI Practice Center community, so we just ask that you keep things civil. Leave out the personal attacks. Do not use profanity, ethnic or racial slurs, or take shots at anyone's sexual orientation or religion. If you can't be nice, we reserve the right to remove your material and ban users who violate our Terms of Service.

You must be logged in to post a comment.