In recent months, patent reexamination practitioners have noticed that an increased number of examination requests with the USPTO have been “bounced” for failing to pass an initial hurdle before any review on the merits. More than 50 percent of requests for both inter partes and ex parte reexams filed in recent quarters were not granted their original filing date, compared to much lower numbers in earlier years. This panel, which includes the director of the USPTO’s Central Reexamination Unit, will identify reasons a request is denied a filing date by the USPTO, and ways to avoid such problems. Issues include the failure to clearly state a substantial new question of patentability (SNQ), a failure to clearly explain the proposed grounds for rejection, or the USPTO’s objection to the grouping or “lumping” of proposed alternative grounds for rejection. The panel will also address other procedural concerns facing reexamination practitioners, including time limits facing the requester of an inter partes exam after the first office action and how the USPTO handles petitions.

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