By Herbert D. Hart III of McAndrews Held & Malloy Ltd. 1
While some may view inter partes reexamination as a mechanism to fix mistakes made by the U.S. Patent and Trademark Office during examination, many see it primarily as a way to perform a different intended function; namely, providing an alternative to litigation over the validity of patents in District Court.
Let’s take a look at how well inter partes reexamination proceedings are performing as an alternative to District Court litigation, as well as how they might be streamlined to better achieve that goal.
The New Popularity Of Inter Partes Reexamination Proceedings
Interest in and use of inter partes reexamination was once minimal. The prevailing wisdom was that the estoppel provisions of 35 U.S.C. § 315(c) made initiating an inter partes reexamination proceeding too risky for the third party requester. More recently, though, spurred in part by the willingness of some District Court judges to grant stays and by the statistical evidence of likelihood of success, litigants have been much more willing to utilize inter partes reexamination proceedings as a tool. Indeed, requests for inter partes reexamination have risen from less than ten per year during fiscal years 2000 – 2002 to 168 in fiscal year 2008. As of June 30, 2009, the year-to-date number had risen to 195.
Even with this relatively sudden rise in popularity, inter partes reexamination proceedings have come ...