Reexamination Applications: Patent Application Types and Strategies – Part 10

If anyone, including the patent owner, believes that there is a question as to whether a patent is still valid due to some newly discovered old patent or other publication (“prior art reference”), they can request that the patent be reexamined.  If the Patent Office agrees that there is a significant new question as to the patentability of the invention (and currently about 95% of the time they are agreeing with the requester), a patent reexamination is ordered.  The Patent Office purpose of reexamination proceedings is to remove invalid patents from the patent system and to narrow and strengthen valid patents.

There are two different types of approaches to patent reexamination:  ex parte (which is handled with just the patent owner and the examiners), and inter partes (during which a third party requester gets to comment on all patent owner submissions and appeal any adverse decisions).  Which approach you choose as a third party requester generally depends on cost (inter partes generally being about four times more expensive than ex parte examination for the third party) and whether the third party wants to comment to the patent examiner on the arguments made by the patent owner.  The ability to comment on the patent owner’s arguments goes a long way in the third party’s ability to make sure that the patent examiner understands completely why the third party believes the patented invention is not new or is obvious.

During the reexamination process, the patent owner gets the chance to amend the patent claims to avoid the new prior art references if necessary and, assuming negotiations with the examiner are successful, a patent will issue with claims determined to be enforceable despite the new prior art references examined.

Benefits of Reexamination for the Patent Owner include:  1) the possibility of a stronger patent;  2) the ability to extinguish third party challenges to the patent based on specific prior art references; and 3) deferring or terminating litigation.  A patent which has survived the reexamination process is considered stronger simply by the fact that it has gone through the examination process again after its original examination and will theoretically be considered more resistant to future challenges.  Beware, however, that because reexaminations are currently being granted so freely, that does not mean that it will be any less likely to be reexamined in the future.  If a competitor is asserting that your patent is invalid because of some prior art reference they found, you can request a reexamination of your own patent to eliminate that claim.  One other advantage during reexamination is that you may be able to add new claims, narrower than the original claims, that focus more closely on your competitors’ products.

Last, if a reexamination is requested at the right time before or during litigation, the judge may agree that the litigation should be put on hold to see what the Patent Office decides about the patent.  Because the reexamination process can take two or more years to complete, this can postpone the litigation expenses for a while during the reexamination and can remove some arguments the patent challenger may use during litigation.  As a patent challenger, an advantage to the reexamination process is that the patent may be declared invalidated or significantly narrowed, this can even eliminate the litigation or cause it to settle more quickly for many cases.

The claims may not be broadened during a reexamination proceeding (see Reissue Applications for broadening the patent).  A reexamined patent expires 20 years from its original priority filing date and is not extended as a result of the reexamination process.