Introduction: Why all of the interest in reexamination?

How many times have you heard:  “They got a patent on that!  There’s nothing new about that.  It’s been out there for years!”?  For those versed in patent matters, that is not a surprising reaction to certain issued patents.  The patent issuance procedure in the U.S. relies on examination of a patent application.  The sources and tools for examination are increasing every day, but just because we have more information does not mean we have more clarity in the patent examination process.  It is very difficult to review claims and determine if something is novel and unobvious over volumes of other patents and publications.  Sometimes more information means more data to sift and decipher.  And definitions of terms are subject to different interpretation.  On occasion, despite the best efforts, accidents will happen and patent claims will issue that should not have issued.

Enter reexamination (or “reexam” for short).  It is a process by which patents can be reviewed to make another assessment of the patent grant.  There are two types of reexamination available at the time of publication of this post:  ex parte reexam and inter partes reexam.  They can be very different procedures and we will explore the differences more in future posts.  In short, the ex parte reexam option provides the option for any person (the “Requester”) to present prior art to the Patent Office that raises a new question of patentability, and then exit the process.  Absent a certain statement addressing the request by the patent owner, the Requester is no longer able to comment in the reexam.  In contrast, the inter partes reexam option allows the Requester to actively participate in the reexamination.

So it is simple then;  just reexamine every patent when a person contests the validity of the patent claims.  That way, we can avoid bothering judges and juries.  We can let the Patent Office make a re-assessment of patent grant and everything is fine, right?  Well, not exactly.  First, the system recognizes that challenges to a patent will occur almost automatically.  The grant of a patent would be meaningless if every time a person challenged the patent the Patent Office would have to initiate a reexam.  So the Patent Office has made rules to ensure that the patent reexamination requires a “substantial new question of patentability.”  Second, reexamination (like examination) takes time and requires precious resources.  The Patent Office cannot afford to reexamine every patent each time a request is made.  And even if it does, reexamination takes time that patent owners cannot always tolerate.  Third, there is prior art that is not allowed to be considered in reexamination.  So in many cases, reexamination cannot replace litigation.

Indeed, reexamination and patent litigation frequently go hand-in-hand.  It is not uncommon that a reexamination follows a litigation concerning a certain patent.  This provides the defendant an opportunity to possibly challenge the patent, challenge an attempt an injunction, delay the litigation (called a “stay”), eliminate “past damages,” and a host of other goals.  For the plaintiff there are “estoppel” effects that can assist its assertion of the patent.  Under certain cases, the prior art relied on for the reexamination is not available at trial should the patent survive reexam and the litigation progress.  It can also be a benefit in extremely technical cases where it may be difficult to communicate the merits of a case effectively to a non-technical finder of fact.

A great body of case law and administrative procedure is evolving out of the use of reexamination today.  We will explore many more aspects of reexamination in future posts.

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