Takeaways:

• SRRs can be a viable option for some reexamination requesters.
• SRRs hard page limits necessitate experienced counsel.

One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of patentability (SNQs). In fact, reexamination filings often grow quite large— many have hundreds of pages, and a few even reach thousands of pages. The number, length, and complexity of the challenged patent’s claims are one driving factor to a reexamination page count. Another factor contributing to page count is when requesters find multiple non-cumulative prior art references upon which to base their reexamination requests.

Historically, reexamination requesters have paid the same filing fee for a reexamination regardless of the complexity (which correlates with size) of the request. That is, until streamlined reexamination was introduced a little over half a decade ago.

In mid-2011, the PTO looked for ways to streamline (shorten) the reexamination process. A public forum was held to discuss a set of proposals and seek public comments to improve the reexamination process. See 76 FR 22854. Ultimately, only one proposal from this forum was permanently adopted by the PTO—the ability for the patent owner (PO) to waive filing a statement under 35 U.S.C. § 304 after a reexamination request filing. A statement waiver effectively eliminates up to four months of reexamination pendency as previously Examiners could not begin any analysis post grant of the request until the sixty-day patent owner statement period expired. Shortly after the forum, however, the America Invents Act (AIA) passed, introducing new post-grant proceedings. The spotlight on the reexamination faded alongside reexamination filings.

Flash ahead six to seven years, in a January 2018 fee setting notice the PTO quietly announced the availability of a “streamlined” reexamination request (SRR). See 82 FR 52780, 52789. These SRRs are “streamlined” in length and not related to the prior 2011 attempts to streamline the reexamination process. A SRR has 40 or fewer pages, yet meets all other formal requirements. For compliant SRRs, the filing fees are 50% lower than regular filing fees, with the caveat that micro entity status for purposes of an SRR is only available to POs and not third-party requesters.

The PTO defined the 40 pages to include claim charts, affidavits, declarations, and any paper including “argument directed to patentability/unpatentability,” including conclusions and definitions. So for many requesters, SRR is unavailable because 40 pages is insufficient to present a grantable request, as 40 pages is a hard limit. Yet for requesters seeking reexamination of a less complex set of claims, a small number of claims, and/or a limited amount of prior art potentially without a declaration, SRR may be a viable option.

Although expert declarations and claim charts are commonly used to meet the required elements of a grantable reexamination request, namely a clear statement of a SNQ and a detailed explanation for each proposed rejection or application of the art, these lengthy documents are not a PTO requirement. Experienced reexamination counsel can efficiently draft a grantable SRR for a small or simple claim set and with limited SNQs.

The PTO does not publish data related to the number of SRRs filed since introduction. Thus, it is not known whether or not this SRR option is filling a need. However, requesters should consider whether SRR is appropriate for their reexamination needs since not all reexaminations require the same processing efforts and can be filed for reduced governmental fees through taking advantage of SRR.