Patent Office Practice - Reexamination

Reexamination proceedings at the U.S. Patent and Trademark Office (USPTO) are on the rise and have become an important option to consider when challenging the validity of claims in a patent. With the implementation of the America Invents Act (AIA), reexaminations will undergo changes, but continue to be a significant strategic tool. Prior to the AIA, a third party requester could choose between an ex parte or an inter partes reexamination and the USPTO used the so-called “substantial new question of patentability” or “SNQ” standard in determining whether to reexamine the patent. The AIA brings several changes to reexamination practice. For example, upon enactment, the AIA elevates the standard for initiating inter partes reexamination, requiring that the requester demonstrate that there is a reasonable likelihood that the requester will prevail with respect to at least one challenged claim. The AIA also replaces inter partes reexamination with inter partes review starting September 16, 2012. Inter partes reexamination, however, will continue to exist for quite some time given all of the currently pending inter partes reexaminations and those that will be initiated before September 16, 2012. Moreover, ex parte reexamination remains largely unchanged and requires only the satisfaction of the SNQ standard. In addition, in light of the Supreme Court’s KSR decision and the dedicated reexamination group—the Central Reexamination Unit—at the USPTO, attacking a patent through a reexamination proceeding has and will continue to be an option to challenge the validity of patent claims by third party requesters as part of a defense in patent disputes.

For example, third party requesters may initiate a reexamination proceeding to provide valuable leverage to assist in settling patent disputes on favorable terms; to achieve a stay of a parallel district court patent litigation or U.S. International Trade Commission (ITC) proceeding; and if the reexamination is successful, to effectively render moot those actions. A reexamination proceeding may also be used by a third party that is searching for a relatively inexpensive option to narrow or cancel patent claims in order to clear the way for a new product design.

For the patent owner, a reexamination proceeding can be used to strengthen a patent’s validity or to preempt an attack on the patent. This can be achieved by obtaining a reexamination certificate with patent claims that have been approved after consideration of prior art that was not before the examiner during the original examination of the patent. Another strategy may be to obtain narrower claims that better avoid the prior art yet still read on a competitor’s product.

Reexamination practice is derived from pre-grant ex parte prosecution with the USPTO, but has a number of unique rules and procedures that make it a specialized proceeding. Such unique rules and procedures include: (1) limits constraining validity challenges to attacks based on prior art patents, printed publications, admissions by the patent owner, or double patenting; (2) the availability of anonymous third-party requests in ex parte reexamination proceedings; (3) estoppel effects on third-party requesters after a final decision in inter partes reexaminations; and (4) very limited opportunities to obtain extensions of time or to seek entry of claim amendments and evidence as the proceeding progresses.

Finnegan attorneys have handled more than 250 reexaminations in the past five years. We represent patent holders and third party requesters in inter partes and ex parte proceedings. The technologies at issue span nearly every industry sector, including semiconductors, medical devices, chemicals, metallurgicals, biotechnology, industrial manufacturing, consumer electronics, and business method patents. Our experience comprises handling all procedural aspects of a reexamination as well as advising clients on litigation strategies that include reexaminations as offensive or defensive tactics. In addition, Finnegan’s extensive patent litigation experience in district courts and before the ITC and the USPTO provides us with an educated and fairly unique perspective on how best to utilize the reexamination proceeding as part of an overall strategy for attacking a patent before the USPTO and in litigation.