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.The first part of this two part article discussed the problem that comes from the US Patent & Trademark Office (“PTO”) granting monopoly rights to someone who effectively reinvented or at best repacked “the wheel” — that is something that had already been done by others.
The PTO frequently grants patent rights that are too broad when the PTO is not aware of the most relevant prior art. The first part of this two-part article discussed the many aspects of being a defendant in a patent litigation suit that make that path unattractive. The alternative is a PTO process called a reexamination. This article provides details on the reexamination process.
There are actually two types of reexamination proceedings. In the ex parte form, after the process is initiated, the only party involved beyond the government is the patent owner. (The inter partes process allows the third party to participate in the reexamination process, but at the cost of forfeiting most of the rights to challenge the validity of the patent in court.)
For the sake of brevity, I will concentrate on ex parte reexamination which is used much more often than inter partes reexamination. (For example, for a recent one week period, the USPTO announced the filing of 10 ex parte reexamination requests, but only one inter partes reexamination request).
So, what’s the story?
Any good story answers very simple questions: who, what, when, where, why and how. Here’s the story on Patent Reexamination proceedings.
Who makes the first move?
While it ends up ex parte with only the patent owner participating, anyone can request the start of the reexamination process. By anyone, I am including the patent owner, potential defendants wishing to have the USPTO eliminate or reduce a patent claim, and in some instances, the Director of the USPTO can start a reexamination without an external request.
Obviously, potential defendants initiate reexamination proceedings to get a set of overly broad patent claims trimmed back or eliminated altogether. The motivation of the patent owner is to get a set of patent claims “blessed” with respect to prior art that has been identified after the patent issued or to get the patent claims trimmed back a bit if necessary to make them valid over this newly found prior art. The patent owner shares the desire of the potential defendants to avoid going through an entire trial just to have the patent claims invalidated. The Director of the PTO can also initiate a reexamination proceeding, usually to quell a public outcry over a broad set of patent claims in a commercially important area.
What and Where?
You initiate a request for reexamination by submitting a document to the PTO explaining that there is a “substantial new question of patentability” about one or more issued claims in a patent. The Reexamination proceeding only considers whether the claims are invalid in light of other patents or publications that preceded the date the patent application was filed. There is a hefty filing fee to request a reexamination (currently $2520), but this fee is tiny compared with litigation fees. An interesting twist is the ability to hide the identity of the party requesting the reexamination from the party owning the patent.
If the USPTO agrees that a substantial new question of patentability is presented, a reexamination is started.
When can it start and when will it end?
Reexamination proceedings can be initiated at any time after the patent issues. It can be initiated before the patent owner sues someone, or after a law suit begins. That covers the beginning of when. The other end of the when questions is, “when does it end?” The good news is that most patent reexamination proceedings end within a year after the start. The PTO internal rules call for giving reexaminations special treatment to get them resolved quickly. A year is a lot less time than it takes to have a patent issue or to go through patent litigation.
How is it different from the original examination?
The reexamination process as the name implies is another examination. The process is similar to, but not the same as, the initial examination process. The first difference is personnel. The PTO uses a different patent examiner. Therefore, the examiner does not have a personal bias to issue the claims again. The second difference is that the PTO has additional relevant prior art before it. The PTO can rely on this new art possibly in combination with the prior art considered during the first examination to reject the pending claims. Just as in the initial examination, the patent owner can submit different claims that might fare better against the prior art of record. Another important difference in the reexamination process is that the claims that come from this process cannot be broader (“enlarged”) than the existing patent claims.
Thus, if you are a potential defendant in a patent legal action, there is relatively little downside to the reexamination process. Relatively little, but still some downside risk to defendants. After the initial filing in an ex parte process, the potential defendant is cut out of the loop and cannot participate in the process. The patent owner, however, has continuing opportunities to communicate its case to the PTO and to tweak the claims to avoid the prior art. Amended claims that result from the reexamination process will enjoy a presumption of validity over the prior art used to initiate the reexamination. Thus, if the prior art used to initiate a reexamination is neutralized by the patent owner after the process turns ex parte, reexamination severely weakens the defendant’s trump cards for use in any future litigation. It will be difficult to prevail at a trial, if the defendant simply re-asserts that the prior art the PTO knew about during the reexamination should have precluded any claims from coming out.
While only 12 percent of the patents that go into reexamination are totally eradicated, another 58 percent of the patents that go into reexamination end up reduced in scope. Thus, 7 out of 10 reexaminations result in at least some reduction in patent scope. Keep in mind that these percentages include situations where the patent owner requested the reexamination to clean up a minor issue hanging over the patent, so the percentages may be more dramatic when limited to reexaminations initiated by third parties.
Though the reexamination process is not without some risk, on balance, the reexamination process is a safe and cost effective tool in fixing patents that were issued in ignorance of relevant prior art.
Perhaps you should consider going on the offensive with a request for reexamination instead of waiting to be sued.
Part One: www.localtechwire.com/article.cfm?u=9691
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 firstname.lastname@example.org