Tagged with reexamination

Supplemental Examination: What Do the Numbers Tell Us?

Author: Adriana L. Burgy
Editor: Jeffrey A. Berkowitz

The USPTO posts raw statistics of filings for a number of proceedings including supplemental examination. A link to the USPTO’s AIA statistics can be found here: http://www.uspto.gov/aia_implementation/statistics.jsp. It should be noted that the data presented in the AIA statistics by the Office does not take into account whether the filing satisfied the statutory and regulatory requirements and was determined to be compliant. Nonetheless, the data serves as a good source to determine how filings, like supplemental examination, are not only being used, but also to what extent. Here, we take a look at supplemental examination and the filings to date.

As of August 2, 2013, the USTPO indicates that there were a total of 33 supplemental examinations filed. Of the 33 filings, there are 16 filings that are publically available as of July 30, 2013, as provided in PAIR. When looking at the numbers for supplemental examination, it is important to keep in mind that a supplemental examination request only becomes public once it is deemed compliant with the filing requirements and a filing date assigned. Moreover if a request for supplemental examination is deficit and not corrected by the patent owner, no filing date is assigned and thus, not available to the public.

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Ex Parte Reexamination Stayed in Favor of Inter Partes Review

Author: Timothy P. McAnulty
Editor: Anthony C. Tridico, Ph.D.

In a recent sua sponte order, the PTAB stayed a concurrent ex parte reexamination proceeding after another party filed a petition for inter partes review (IPR) against the same patent. Lumondi Inc. v. Lennon Image Tech., IPR2013-00432, Paper 7 (Aug. 6, 2013). The reexamination request was filed on September 15, 2012 and had already undergone substantial reexamination. The petition for inter partes review was filed almost a year later by a different party on July 10, 2013. Although the petition challenged substantially the same claims as the reexamination request, it raised different grounds of unpatentability based on different prior art.

The Board recognized that the Office does not ordinarily stay reexamination proceedings because they are to be conducted with special dispatch. According to the Board, however, conducting the two proceedings concurrently “would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings.” The Board provided three justifications for issue the stay. First, it noted that the patent owner could amend the claims in the reexamination proceeding separate from the inter parties review. Second, it emphasized the time constraints that apply to inter partes reviews. And third, it explained that decisions by the Board during the inter partes review may simplify the issues in the reexamination. The fact different parties challenged the claims based on different prior art “did not weigh in favor of concurrent Office proceedings” given the fact that the same claims were challenged in both proceedings.

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