The Patent and Trademark Office Authorization Act of 2002, a little-publicized provision tacked on to an unrelated spending bill at the last minute, is expanding the scope of patent re-examination and could reduce expensive litigation, according to attorneys who deal with intellectual property issues.

Re-examination is the process by which patent owners or other parties send an issued patent back to the U.S. Patent and Trademark Office (USPTO) to be re-evaluated to determine if it meets the required standards of so-called patentability. Since the majority of patent infringement lawsuits turn at least in part on whether the patent is valid, re-examination proceedings provide a relatively low-cost vehicle by which a patent owner or a party accused of infringing a patent can have the patent office make a determination of the validity of the patent, rather than having to undertake expensive litigation, attorneys say.

“We will be looking for ways to employ re-examination as an alternative or adjunct to litigation whenever the needs of our clients are best served,” Larry Roberts says of his intellectual property practice at Kilpatrick Stockton in Atlanta. “Whereas litigation requires litigators, re-examination is best handled by attorneys skilled in patent prosecution. So whereas a general litigator may not be admitted to the Patent Bar and hence not be qualified to use re-examination, we have a great many attorneys with a wide variety of technical backgrounds who can handle re-examination as well as litigation.”

The new law would allow publications already considered by the patent examiner during the examination of the original patent application to be considered again during the reexamination process. Patent applications must meet certain standards for a patent to issue; among those being that the invention is “new,” says Roberts, and not merely an obvious modification of an invention that is already known. Printed publications are the most common way to establish what is already known.

For a patent to be re-examined, Roberts says it must be shown that there is a “substantial new question of patentability.” In the past, if the USPTO had considered a publication during the application process, anyone requesting re-examination could not assert that publication again for the purpose of creating a new issue of patentability.

“The presumption is that patent examiners completely read and understand every publication,” Roberts says. “The reality is that they do sometimes overlook critical passages or fail to appreciate the significance of what the publication teaches. If the examiner made a mistake, then the patent shouldn’t have been issued…the consequence being that litigation in the Federal Courts was the only recourse in the past.”

Another provision of the Act, which President Bush is expected to sign into law this week, expands the rights of third parties, who request a patent re-examination, to be involved in the appeals process.

“The new laws address many concerns that have prompted patent litigants to avoid re-examination in the past,” Roberts adds. “Re-examination now becomes a more attractive alternative to high-cost litigation.”

For the immediate future, Roberts says he doesn’t see the expanded re-examination as justifying a substantial increase in patent office fees. Even if it did, he says it would most likely affect only the fees payable for the re-examination process…not fees generally.

“It could be argued that inventors face more hurdles, as competitors now can challenge the validity of a patent for a relatively small cost, putting the burden on the patent owner to defend his patent,” Roberts explains. “The flip side is that it also opens the door for small inventors to resolve many issues relating to the validity of patents without having to undertake the substantial expense of litigation in the Federal District Courts.”

Kilpatrick Stockton: