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Streamlined Patent Reexamination Proceedings: Petition Practice Management Scott McKeown

Streamlined Patent Reexamination Proceedings: Petition Practice Management Scott McKeown. Reexamination Petition Crisis. Growing proportion of reexaminations now inter partes Litigation inspired tactics/filings Petition pendency infects special dispatch of CRU

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Streamlined Patent Reexamination Proceedings: Petition Practice Management Scott McKeown

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  1. Streamlined Patent Reexamination Proceedings: Petition PracticeManagementScott McKeown

  2. Reexamination Petition Crisis • Growing proportion of reexaminations now inter partes • Litigation inspired tactics/filings • Petition pendency infects special dispatch of CRU • Purely procedural issues are common 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com

  3. Inter Partes Petition Example Petition to Waive Page Limit Insignificant Procedural Issue (but common) 1. Office Action March 5, 2010 2. Response June 10, 2011 (petition to waive page limit) -3PRComment due July 10? 3. September 10, 2010, OPLA grants petition “perfects response.” 4. October 10, 2010 3PR files Comment 5. 3PR Comment delay a function of OPLA backlog -In this case 7/10 – 10/10… examiner waits Special dispatch frustrated by minor procedural issue Other common procedural issues/complaints -Late Mail, improper papers, etc (aggravate petition backlog) 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com

  4. Proposal: Ombudsman Management of Procedural Matters IPROmbudsman todecide procedural disputes only • Build on Interference model (Phase 1) • Leverage existing BPAI paralegals • Telephone conference Phase 2 (Interview/Motion Hearing for Substantive Issues) • Joint motion for page limit issues?-- solve issue before filing Help eliminate delay of petition pendency Reduce OPLA petitions to substantive issues. • Help clarify when opposition is permitted (i.e., petitions only) • Begin Transition to BPAI control of IPR (Patent Reform) 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 4

  5. Proposal: Pilot Program Web Portal Start BPAI Pilot Program (IPR Web Portal) • Build on existing Interference Platform • Email service managed by USPTO Reduce petitions on mail timing. Avoid COS non-compliance issues Reduce paperwork Begin transition to BPAI control These proposals are directed to A8, Qs 10-11 and 13 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com

  6. Thank You Scott A. McKeown smckeown@oblon.com 703-412-6297 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 1940 Duke Street, Alexandria, VA 22314, 703.413.3000, Fax 703.413.2220, www.oblon.com 6

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