In a 2005 study, attorney Joseph Cohen found that 98% of all inter partes reexamination requests had been granted. On March 30, 2006, the PTO issued a proposed rule change that might change that outcome. According to the proposal, a patent owner will be given an opportunity to reply to the third-party reexamination request prior to the examiner’s decision on the request. Thus, a patent holder may be able to convince the PTO of an absence of a “substantial new question of patentability” and avoid the reexamination proceeding altogether.
In a bit of give-and-take, the proposal would also prohibit supplemental patent owner responses to an Office Action without a showing of sufficient cause.* Comments on the proposed change are due by May 30, 2006 and should be e-mailed to AB77.comments@uspto.gov.
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* Several other formalities regarding reexamination practice are also included in the proposed change.
