Next speaker is Mr. Kenneth Schor of the USPTO’s Office of Patent Legal Administration (OPLA).  He is discussing petition practice in patent reexamination from a USPTO perspective. He says that a petition should include:a statement of the type of relief requested and the authorizing provision of the rules, statute, etc.; a statement of the facts; an identification of the points that are to be reviewed; and the fee, where required, to avoid summary dismissal (it’s recommended that a petition include a general authorization to charge deposit account, in case relief can be granted only based on a regulation requiring a higher fee than submitted).

Schor says, in reexamination, especially inter partes reexamination, petition practice has the potential to unduly delay the proceeding, in order to achieve resolution of all petitions:

1. Multiple petitions are filed to obtain one type of relief;
2. Petitions are filed under multiple grounds to obtain the same type of relief. (items (1) and (2) are addressed in MPEP 2209 & 2609.  ** Parties are cautioned against using so-called “litigation tactics. Parties are advised to avoid multiple submissions directed to a single issue of relief.  It is expected that parties will adhere to 37 CFR 11.18(b) throughout the course of a reexamination proceeding- reasonable basis for filing, not for delay.
3. If relief needed, file one petition at a time directed to one avenue of relief, and wait for a decision. Doing otherwise results in delay and may obscure the issues, so that you do not get the relief you intended to ask for.
4. In spite of the MPEP caution to parties against using “litigation tactics,” parties have used petition practice as a motions practice resulting in a dramatic upswing of petitions.  The result has been proceedings being delayed by the need to address this dramatic increase in petitions, despite the Office’s statutory mandate for special dispatch in reexamination and there is an undue drain on staff resources to address these petitions.

Schor says that to address the increase in the number of reexamination petitions, the Office will be taking greater notice of whether a reasonable basis exists for filing petitions.  The Office will be looking for:

1. Multiple concurrent petitions for an item of  requested relief, or multiple alternative grounds for one item of requested relief;
2. Unjustified multiple iterations of petitions for an item of relief.
3. Petitions to resolve issues which are appealable, not petitionable.
4. Frivolous petitions, that may delay and may unnecessarily complicate matters.

Schor offerred Best Practices for Reexam Petitions:

1. Submit a comprehensive, concise and complaint request to minimize the need for petitions;
2. A high quality request will minimize the occurrence of petitionable issues during prosecution of the reexamination proceeding. Be sure to include: a statement pointing out each substantial new questions of patentability (SNQ) based on the cited patents and publications; a detailed explanation of how all of the cited documents are applied to the claims for which reexamination is requested; for each identified SNQ, the request must explain how all of the cited documents identified for that SNQ are applied to meet/teach the claim limitations (all limitations of the claim must be addressed).
3. Keep powers of attorney and correspondence addresses current and consistent in both the reexamination proceeding and the patent’s file history.
4. Keep all comments submitted in accord with the scope of reexamination and do not include issues of misconduct, inequitable conduct, and patentability issues not based upon patents and printed publications.
5. Use Office forms, which are kept up to date and compliant with all relevant rules.
6. Petitioner must select the appropriate rule under which relief is being requested.
7. Do not simply attempt to cover “all the bases” and caption multiple petition rules.  This will cause confusion and delay in the routing of the petition to the correct decision maker.
8. Caption the petition and cite the appropriate rule.  Failing to caption the petition slows down the process to identify the paper as a petition and rout it to the correct decision maker.
9. Analyze the relevant facts and circumstances as to whether they meet the appropriate standard for the relief requested.
10. Untimely, improper or inappropriate petitions:  (a) as reexaminations are under a statutory mandate of special dispatch, the time limits for filing are strictly followed.  (b) filing  a petition on multiple issues for multiple forms of relief, or relief in the alternative, or one petition for multiple cases – is improper and not in accordance with rules. (c) Filing “conditional” or “premature” petitions is inappropriate and should not be done.

Tags: Kenneth Schor, MPEP, Petition practice, Reexamination, reexamination petitions, USPTO

This entry was posted on Friday, February 4th, 2011 at 17:34 and is filed under Patent Litigation, posts, Reexamination. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.