Patent Reexamination

Safeguarding Innovation and Intellectual Property Rights

In the ever-evolving landscape of intellectual property law, patent reexamination stands out as a crucial process for maintaining the integrity of the patent system. Critics of the US patent system often claim the USPTO does a horrible job of allowing absurd patents, like Smucker’s peanut butter sandwich patent (US6004596A), Amazon’s 1-click online ordering patent (US5960411A) or Apple’s glass staircase patent (D478999S1).   As businesses and inventors continue to push the boundaries of innovation, and in some cases reverse them, understanding the intricacies of patent reexamination becomes increasingly important for protecting the integrity of the US Patent System while ensuring valuable intellectual property assets remain protected.

What is Patent Reexamination?

Patent reexamination is a post-grant procedure that allows the United States Patent and Trademark Office (USPTO) to reconsider the validity of an existing patent. This process can be initiated by anyone, including the patent owner, a third party, or even the USPTO Director. The primary purpose of reexamination is to address potential errors or oversights that may have occurred during the initial patent examination process. A patent reexamination offers several benefits over traditional court litigation, including helping the defendant’s avoid costly discovery during the course of the USPTO proceeding, which can be rather lengthy.

Types of Patent Reexamination

There are two main types of patent reexamination:

• Ex Parte Reexamination: This is the more common form where the requesting party has submitted what they believe to be relevant prior art, but it is entirely up to the patent examiner to assess the relevance of that prior art and apply it with no further input from the requesting party. After filing the request for reexamination, the requester’s involvement typically ends.
• Inter Partes Review: This is where the requesting party initiates the “reexamination” process and remains involved as an on-going participant to the reexamination process.  While not technically a reexamination, this process allows third parties to challenge the validity of a patent before the Patent Trial and Appeal Board (PTAB).

The Ex Parte Reexamination Process

Initiating the Reexamination

To start an ex parte reexamination, a request must be filed with the USPTO, accompanied by the appropriate fee. The reexamination process can be raised at any time during the period of enforceability of the patent but must raise a “substantial new question of patentability” based on prior art patents or printed publications. This is typically for challenging the patent based on additional prior art which if considered by the examiner, are believed to render the patent invalid for lack of novelty or obviousness. 

USPTO Review

Upon receiving the request, the USPTO has three months to determine whether a substantial new question of patentability exists. If such a question is found, the USPTO will order a reexamination of the patent.

Examination and Resolution

During the reexamination process, the patent examiner will review the claims in light of the new evidence presented. The patent owner has the opportunity to respond to office actions and may amend claims or add new claims, provided they do not broaden the scope of the original patent.

Advantages of Patent Reexamination

In addition to deferring discovery costs, a reexamination proceeding can make it easier to challenge a patent because in a USPTO reexamination proceeding, there is no presumption of validity, unlike in the courts.

1. Cost-Effective Alternative: Reexamination can be a more affordable option compared to litigation for challenging or strengthening a patent.
2. Expertise of USPTO: The process leverages the technical expertise of USPTO examiners in evaluating patent validity.
3. Opportunity for Strengthening Patents: Patent owners can use reexamination to address potential weaknesses and strengthen their patents against future challenges.
4. No Estoppel for Ex Parte Reexamination: Unlike some other post-grant proceedings, ex parte reexamination does not create estoppel effects for the requester

Challenges and Considerations

While patent reexamination offers several benefits, it’s not without its challenges:

1. Limited Scope: Ex parte reexamination is limited to issues of novelty and obviousness based on patents and printed publications.
2. Time Constraints: The process can be lengthy, potentially lasting several years.
3. Limited Participation for Third-Party Requesters: In ex parte reexamination, the requester’s involvement is typically limited after filing the initial request.
4. Potential for Strengthened Patents: While this can be an advantage for patent owners, it may pose a challenge for those seeking to invalidate a patent.

The Inter Partes Review Process

The Inter Partes Review is an administrative trial proceeding conducted by the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO). Introduced by the America Invents Act in 2012, IPR replaced the previous inter partes reexamination process, offering a more streamlined and cost-effective alternative to challenging patent validity in federal court.

Initiating an Inter Partes Review

To initiate an IPR, a third party (not the patent owner) must file a petition with the USPTO. This petition can be filed after the later of:

1. Nine months after the grant of the patent or issuance of a reissue patent
2. The termination of any post-grant review, if one was previously instituted

The petition must challenge the patentability of one or more claims in the patent based on prior art consisting of patents or printed publications. It’s crucial to note that there’s a 14,000-word limit for the petition, which includes any declarations or affidavits.

USPTO’s Response to an IPR Request

Upon receiving an IPR petition, the USPTO takes the following steps:

1. The patent owner may file a preliminary response to the petition.
2. The PTAB reviews the petition and any preliminary response to determine if there’s a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claims.
3. If the PTAB believes the petitioner met the threshold, the PTAB institutes the Inter Partes Review proceeding.

Examination and Resolution of IPR

Once instituted, the Inter Partes Review process unfolds as follows:

1. Discovery Phase: Limited discovery is allowed, including depositions of witnesses submitting affidavits or declarations.
2. Patent Owner Response: The patent owner may file a response to the petition, addressing the grounds for unpatentability.
3. Petitioner Reply: The petitioner may file a reply to the patent owner’s response.
4. Oral Hearing: If requested, the PTAB may conduct an oral hearing before a three-judge panel.
5. Final Decision: The PTAB must issue a final written decision within one year of institution (extendable by up to six months for good cause).

Advantages of Requesting an Inter Partes Review

Inter Partes Reviews offers several advantages over traditional patent litigation:

1. Cost-Effective: IPR is generally less expensive than federal court litigation, with costs often in the hundreds of thousands rather than millions of dollars.
2. Faster Resolution: The process typically concludes within 12-18 months, compared to years for federal court litigation.
3. Specialized Judges: PTAB judges often have technical backgrounds, potentially leading to more informed decisions.
4. Lower Burden of Proof: IPR uses a “preponderance of evidence” standard, rather than the “clear and convincing” standard used in district courts.
5. Broader Claim Construction: The USPTO applies the broadest reasonable interpretation of claims, potentially making it easier to invalidate patents.

Challenges and Considerations

While IPR can be a powerful tool, it’s not without challenges:

1. Estoppel Effects: Petitioners may be estopped from raising in subsequent proceedings any ground that was raised or reasonably could have been raised during the IPR.
2. Limited Scope: IPR is limited to anticipation and obviousness challenges based on patents and printed publications.
3. Potential for Amendment: Patent owners have the opportunity to amend claims during IPR, including seeking amendments to strengthening their patent.
4. Discretionary Denials: The PTAB has discretion to deny institution of an IPR, even if the threshold for institution is met.

Strategic Implications

Patent reexamination can play a crucial role in various intellectual property strategies:

1. Defensive Strategy: Companies facing patent infringement allegations may use reexamination to challenge the validity of the asserted patent.
2. Offensive Strategy: Companies looking to pursue patent infringement litigation may use the reexamination process to strenghten their patent and clean up and vulnerabilities prior to asserting the patent against potential infringers.

The Importance of Experienced Legal Counsel

Navigating the complexities of patent reexamination requires a deep understanding of patent law, USPTO procedures, and technical expertise. An experienced patent attorney can provide invaluable guidance throughout the reexamination process to:

• Assess the strength of a patent or reexamination request
• Develop effective strategies for initiating or responding to reexamination proceedings
• Draft compelling arguments and responses to USPTO office actions
• Maximize the chances of a favorable outcome

Take Action to Protect Your Intellectual Property

Whether you’re a patent owner looking to strengthen your intellectual property rights or a third party seeking to challenge a patent’s validity, the reexamination process can be a powerful tool in your arsenal. However, its complexities demand expert navigation. Don’t leave your valuable intellectual property to chance. Contact our experienced patent attorneys today for a consultation. We’ll help you understand your options, develop a tailored strategy, and guide you through every step of the patent reexamination process.