Takeaways:
- Dismissed petitions are common and can be avoided.
- Filing petitions in a Reexamination or Reissue adds delay to “special dispatch.”
This month we take a deeper dive into petitions practice for cases handled by the Central Reexamination Unit (CRU). As noted in our previous article, issues of first impression sometimes arise in cases before the CRU where there is little or no guidance for the CRU examiner to follow. And sometimes situations arise where one of the parties strongly believes that the examiner’s procedural action or requirement is simply wrong. Such situations necessitate the filing of a petition for relief, and the Office provides various petition options. Understanding petition practice and selecting the best petition vehicle for the situation are initial hurdles to clear to be granted petition relief.
The Office generally issues three types of petition decisions: Granted, Denied, and Dismissed. The first two types are clear and the petition decision spells out the actions/options to be taken or why the requested actions/options will not be taken, depending upon the decision type. Denied petitions may or may not offer options for additional petition opportunities, depending upon the situation and the deciding official.
Dismissed petition decisions are more common and more confusing. When a petition is dismissed, it usually means the petition is deficient or incomplete in one or more aspects, or the petition has been filed under the wrong rule. It is common for dismissed petitions to merely note one reason for dismissal and invites petitioner to submit a request for reconsideration. However, the Office rarely illuminates all possible reasons for dismissal in the initial decision. This situation can lead to serial request for reconsideration and dismissals, which frustrates both the patent owner and the CRU’s “special dispatch” mandate. When prosecution speed is important to a patent owner, contacting Office personnel, e.g., the reexamination and reissue hotline, prior to petition filing to discuss the appropriate rule for petition presentation, as well as the type of evidence or argument the Office may require for a grantable petition, may lead to timely granted petition outcomes. Further, after receiving a dismissal, it is prudent for petitioner to contact the deciding official directly prior to any reconsideration request. Petitioner should specifically inquire as to the type of facts, evidence, or argument that result in a persuasive petition to ensure a complete reconsideration request is submitted.
It is also important to note that virtually all petition submissions in a reexamination proceeding or reissue application remove the file from the examiner’s docket of available workload. Different petition types are decided by different deciding officials within the Office. Reexamination and reissue petitions are most commonly decided by the CRU Director’s designee or by designated personnel within the Office of Patent Legal Administration (OPLA). These deciding officials balance their petition workload against their remaining duties and generally decide petitions in the order they are received, unless the petition is identified as time-critical. The filing of a petition may add a few months or up to a year to overall pendency of the proceeding.
In certain situations, especially in reexamination, this delay, or avoiding the delay, may be desired as a strategic advantage. For example, avoiding the delay is desirable if there is a race to the Federal Circuit over invalidity issues under Fresenius USA, Inc. v. Baxter Intern., Inc., 721 F. 3d 1330 (Fed. Cir. 2013). As another example, delay may be desirable if there is a revenue generating licensed patent claim that is rejected as unpatentable under a third-party requested reexamination. Each month the patent claim remains in force is valuable to patent owner.
A skilled practitioner will understand these unique situations, and the importance of considering each office action for petitionable issues as appropriate. Ideally, the skilled practitioner must understand the nuances between petitionable issues and appealable issues to alert their client of all their options. And the skilled practitioner must always create a consistent and clear record of contesting each issue to preserve the issues that will become key in the success of future court proceedings.
