WRAL Tech Wire

PTO Reexamination Proceeding ... An Inexpensive Alternative to Patent Litigation

Editors Note: Kevin E. Flynn is a patent attorney and a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A. this is the first of a two-part article.The patent office wouldn't issue a patent that claimed to improve a wheel by making it round.

Why?

Because the patent office knows that most wheels are round. Round wheels aren't new and ALL patent examiners know it.

Ah, but . . .

. . . what if your competitor effectively reinvents the wheel and submits a patent application that covers something that is useful but not really new?

. . . what if the patent examiner doesn't know that this sort of "invention" has been used before?

Are you stuck?

Will you have to pay millions in damages or to litigation attorneys?

In a word, NO.

Lighting the Way

To quote an old adage, "it is often better to light a single candle than to curse the darkness."

The darkness in this case is the ignorance of the Patent and Trademark Office of relevant prior art.

When the PTO doesn't know about the patents, articles, products, or other prior art that represent the closest things to the proposed invention, sometimes patents issue with overly broad claims. Then people curse the PTO for their failure to consider the most relevant prior art -- effectively cursing the darkness.

So, what do you do if your competitor gets a patent as a result of PTO ignorance?

Go to Court and Pay Big $$$$

You can sit back and do nothing. When approached to pay license fees, you can refuse and let the patent owner take you to court.

This is not an attractive option. Attorneys' fees can quickly exceed several hundred thousand dollars and move easily above a million dollars. The litigation will be extremely distracting to your executive team and to the design team that designed the infringing product.

Litigation poses many risks. The jury hearing the case won't know about the relevant technology and the history of the industry.

How do I know that? Easy. Lawyers typically try to eliminate anyone with a clue so the jurors will only know what the lawyers tell them.

As both sides will try to win over the jury with an array of experts, the process sometimes becomes more about personalities and less of a dispassionate examination of the dry details.

Finally, as the defendant you will start in a hole with the jury. Remember, the patent has a "presumption of validity" because there is a legal rule that government employees are presumed to have done their jobs. That often means the jury assumes you are guilty.

The patent owner reinforces this assumption by showing the jury a special copy of the patent with an impressive government seal and ribbon. To make matters worse, if a few companies decided it was easier to buy a license than risk litigation, their payment of license fees is fed to the jury as an independent validation of the patent claims. I could go on, but I think you will agree that litigation is not an attractive option.

Are multi-million dollar patent infringement law suits based on patents issued by the PTO's ignorance of the most relevant prior art common? Unfortunately, yes they are. Many of the patents asserted in lawsuits are invalidated when the judge and jury look at a broader cross section of prior art than the PTO knew about and decide that the PTO should not have issued this set of patent claims in the first place. The most common reason for finding patent claims invalid is that the PTO did not know the most relevant prior art.

Even if you manage to overcome all the disadvantages and win at trial, it is bittersweet. The process cost millions $$$$.

A way to light a candle (and maybe torch the patent)--

If that doesn't sound appealing, why not try this instead?

Initiate a process to fix the patent without the downside of being a defendant in court. A PTO administrative procedure called Patent Reexamination is the way PTO fixes problems it created by issuing patents that should not have issued at all or issued with claims that are overly broad in light of the full range of prior art.

So instead of cursing the PTO for not knowing all the relevant prior art, you light a candle by showing the PTO the relevant material and you ask them to reconsider the decision to grant the set of broad claims.

Before risking a full-blown trial, it might be wise for you to spend a little money on reviewing patents that affect your industry and determining whether there are grounds to terminate or trim back overly broad patent claims in a Reexamination Proceeding at the PTO.

If you are interested in additional details on the reexamination process, you are in luck. A second part of this two part article which will provide the who, what, when, where, why and how of the reexamination process.

Daniels Daniels & Verdonik, P.A. has been serving the legal needs of entrepreneurial and high technology clients for more than 20 years. Kevin Flynn combines the knowledge and experience that he has obtained as an engineer, lawyer, and patent lawyer to assist clients on obtaining broad patent claims where justified and dealing with the unjustified, bloated patent claims belonging to third parties. Questions or Comments can be sent to kflynn@d2vlaw.com