Abstract

http://ssrn.com/abstract=2121917
 


 



Ten Years of Inter Partes Patent Reexamination Appeals: An Empirical View


Eric J. Rogers


Illinois Institute of Technology - Chicago-Kent College of Law

August 1, 2012

Santa Clara Computer and High Technology Law Journal, Forthcoming

Abstract:     
An empirical analysis was performed of the first ten years of decisions by the Board Patent Appeals and Interferences regarding inter partes patent reexamination appeals. The analysis of 101 cases focused on answering three broad questions: 1) How accurate are the specialist patent examiners of the Central Reexamination Unit of the U.S. Patent and Trademark Office? 2) Do patent owners or third party requestors fare better in appeals of decisions in inter partes reexamination proceedings? 3) Which types of appeals are more likely to be successful? The examiners’ determinations were upheld more than three fourths of the time; third party requestors tended to be more successful than patent owners at winning appeals; and appeals solely by third party requestors of unadopted grounds of rejection were the most successful type of appeal. These historical observations can be used to predict the success rate for appeals of Patent Trial and Appeal Board decisions in Inter Partes Review (IPR) proceedings, which will be implemented in September 2012. Appeals of IPR decisions by third party requestors are predicted to have a better success rate at maintaining patent claim rejections and adding new grounds of rejection than appeals by patent owners will have at receiving reversal of patent claim rejections.

Number of Pages in PDF File: 45

Keywords: patent reexamination, inter partes, central reexamination unit, board of patent appeals and interferences

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Date posted: August 9, 2012 ; Last revised: August 18, 2012

Suggested Citation

Rogers, Eric J., Ten Years of Inter Partes Patent Reexamination Appeals: An Empirical View (August 1, 2012). Santa Clara Computer and High Technology Law Journal, Forthcoming. Available at SSRN: http://ssrn.com/abstract=2121917 or http://dx.doi.org/10.2139/ssrn.2121917

Contact Information

Eric J. Rogers (Contact Author)
Illinois Institute of Technology - Chicago-Kent College of Law ( email )
565 W. Adams St.
Chicago, IL 60661-3691
United States
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