In For a Penny – Are Fee Increases Reducing the Number of Ex Parte Reexamination Filings?

By Ben Snitkoff

In September of 2012, the old inter partes reexamination system gave way to the new inter partes review proceedings. The America Invents Act (AIA) gave the US Patent Office authority to set the fees for IPR proceedings at level reasonable related to the anticipated costs of these new, more robust, proceedings. Not surprisingly, the IPR fees were set substantially higher than those for the old inter partes reexamination system.

However, along with this change and accompanying fee differences, the Patent Office also raised the filing fees for ex parte reexaminations dramatically. (Ex parte reexamination, as the name suggests, provides a mechanism for challenging patents with very limited opportunities for the challenger to participate.  Originally, ex parte reexamination was the only option for third parties to request review of issued patents.  The AIA largely left this system untouched.)  As the Patent Office’s fiscal year comes to a close, we have an opportunity to examine how the first year of higher fees affected filings of ex parte reexaminations and inter partes reviews. Continue reading “In For a Penny – Are Fee Increases Reducing the Number of Ex Parte Reexamination Filings?”

Chief Judge James Smith Comments on PTAB’s Docket

 By Tom Engellenner
August was another busy month for the USPTO’s Patent Trial and Appeal Board with nearly seventy new petitions filed challenging issued patents.

Last week at ceremonies in Washington, D.C. commemorating the second anniversary of the America Invents Act (AIA), Chief Administrative Patent Judge James Smith of the PTAB noted that over 500 hundred petitions had been filed since the contested matters provisions of the AIA took effect.  He predicted that the USPTO will soon be seeing 1,000 new petitions a year challenging patents and that this case load will rival that of the busiest federal district courts hearing patent suits.

According to Judge Smith, the board is instituting trials more than 80 percent of the time and he predicted that the PTAB will grant at least 400 petitions and initiate invalidity trials on more than 400  patents in 2013.  He suggested that the high number of petitions “is indicative of the trust that patent challengers feel that the board is, at least in their view, going to do the right thing in these proceedings.”

“Once potential petitioners saw the high percentage that result in trials, it boosted the level of confidence that the board is taking these seriously,” he said.

Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold

By Ben Snitkoff
The regulations implementing Inter Partes Review (“IPR”), as well as Post-Grant Review (“PGR”), allow the Patent Trial and Appeal Board (“Board”) to join or stay certain proceedings by motion or sua sponte. See 37 C.F.R. § 42.122 (IPR), and 37 C.F.R. § 42.222 (PGR). This provision seems to make a good deal of sense in terms of avoiding duplication of effort and possible inconsistent results. Continue reading “Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold”