The Dilemma with Patent Owner Statements Post-Reexamination Order

Takeaways:

1. Patent owner statements present both risks and limited opportunities.

2. Waiving the patent owner statement shortens overall reexamination proceeding pendency.

Every third party requester ex parte reexamination order includes a reminder that the patent owner has a 60-day window to file a patent owner statement. The patent owner statement should lay out why the request should not have been granted, along with any narrowing amendments the patent owner wants considered before the examiner takes up the case to consider issuing rejections or confirming (i.e., allowing) the claims. The boundary and suggestions for what the statement should entail are found at MPEP § 2249 discussing 35 U.S.C. § 302 and 37 C.F.R § 1.530, which broadly states “[a]ny statement filed must clearly point out why the patent claims are believed to be patentable, considering the cited prior art patents or printed publications alone or in any reasonable combination.”

Many patent owners see this reminder in the order, and immediately believe this is their chance to get out of the reexamination and convince the examiner that the claims should be confirmed. But there is a catch when the patent owner is not the requester, and a large deterrent. If the statement is filed, the advantage of an ex parte proceeding being one sided is forfeited for this one moment in time because “[a] response by requester for a reply under 37 CFR 1.535 [to the patent owner statement] is two months from the owner’s service date. …” Yes, this means that the requester would then have the ability to file any rebuttal argument to the patent owner’s statement, and potentially, to any weaknesses in the requestor’s case brought out in the order.

Most patent owners do not want to provide the requester any additional opportunity to be part of the proceeding, so they do not take the office up on this opportunity.

Additionally, the statement period delays the examiner’s next action. If a patent owner wants the proceeding to move forward quickly, it would actually be to their benefit to either waive the statement when the Central Reexamination Unit paralegal calls their representative or formally contact the Office and tell them they are waiving the statement. Waiving the statement prior to order enables the Office to issue the order and the first office action together, thereby greatly speeding up the proceeding.

When should a patent owner’s statement usually be submitted given these disadvantages? Most practitioners would tentatively recommend a statement when there is clear cut and definitive case-ending argument that is not clear from the record and cannot be refuted by the requester or the Office. For example, when a substantial new question of patentability is based upon a document that is clearly not proper prior art, or when there is an explicit mistake in the request as to a claim’s meaning or reference’s teaching. These should be objective errors and not subjective arguments.

In the end, from our non-empirical data, less than 5% of patent owners file these statements. And the authors do not see that changing anytime soon.