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RE-EXAMINING ISSUED PATENTS
 Post Grant Reexamination The United States
Patent and Trademark office has two types of procedures to reexamine
issued patents. The first is called ex parte, where the
patent is reviewed without participation of a third party
complainer. The second, available for patents issued after November
29, 1999, is called inter partes and involves the third party much
like a law suit in a court.
Overall since 1981, 5,316 patents have been issued reexamination
certificates based on filings which cite prior art not considered in
patent issuance. Of these, the patents were either modified (64%) or
completely revoked (10%).
Since 1999, the inter partes proceeding has involved challenges
to 104 patents with 60% of these patents completely revoked.
The conclusions: ex parte proceedings have been successful at
altering the claims and inter partes proceedings have been far more
successful at revoking patents.
See also the related discussion of patent reissue, which is a procedure used to correct
an issued patent.
Who Can Ask for Reexamination? Anyone can request
reexamination at any time during the period of enforceability of the
patent.
Costs.
- Total ex parte cost is about $7,600 consisting of filing fees currently
at $2,520 and attorney fees of $5,000.
- Total inter partes cost is about $44,000 consisting of filing fees currently
at $8,800 and attorney fees of $35,000 through closing of the
prosecution. Both costs may also have additional claim
fees. Hourly rates instead of fixed fees are available at $250
per hour.
Comparisons. According to the American
Intellectual Property Law Association 2005 Economic Survey---
- for ex parte reexamination, the
median cost of attorney fees is $7,500 and adding likely costs brings
the total for ex parte to $10,000;
- for inter partes reexamination,
the median cost of attorney fees through prosecution is $40,000 and
adding likely costs brings the total for inter partes to $49,000.
- Another independent survey found the total cost of an ex parte
reexamination is in the range of $18,000 - $35,000 and an inter
partes $20,000 - $150,000.
How is it Done? A person files the request,
explains the issues and submits the supporting materials as required by
the Patent Office. The request must set forth the pertinency
and manner of applying cited prior art to every claim for which
reexamination is requested.
Motivation for
Reexamination.
- A third party might seek reexamination to call attention to prior
art it has discovered to set aside the grant of a patent. This
is often a defensive move by someone to void a patent in the patent
office rather than face a lengthy, more expensive infringement action
in Federal Court.
- A patent owner or alleged infringer may want to "stay"
litigation pending the less expensive reexamination process before the
Patent Office. Timing of the filing of the reexamination could be
critical the practicality of this tactical move.
- A patent owner may find a prior art and recognize that he needs to
narrow the claims in his original patent. He might then submit a
request to amend his claims to specifically avoid the prior art.
It should be noted that the scope of the claims may not be enlarged in
a reexamination proceeding. On the other hand, in a reissue
proceeding, a patent owner may enlarge his claims to claim more
territory based upon what he originally disclosed in the
specification, but only if he does so within the first two years after
patent issuance. Enlarging a patent claim may only be proposed
during the first two years after the patent issues in a reissue
proceeding. After that, only narrowing amendments may be
proposed.
- A patent owner might seek changes to the claims in an issued patent
either to get around prior art subsequently discovered or to correct
claims that did not properly cover the invention. The patent
owner may make the reexamination request by presenting the prior art,
identifying the claims in question, and proposing an amendment.
However, in most such circumstances, a patent reissue application
would probably offer more flexibility to the patent owner.
- Licensees can challenge a patent via the reexamination process.
- Others likely to use the reexamination process include potential
licensees, infringers, potential exporters, patent litigants,
interference applicants, and International Trade Commission
respondents.
Anonymity. A request for ex parte
reexamination can be made in a manner to keep secret the actual real
client in interest. However, for an inter partes proceeding,
the filing of the request must include a statement identifying the
real party in interest.
Ramifications for Infringement. A
competitor may have examined an original issue patent and concluded that
it is invalid based on prior art that it had identified. Proceeding
ahead, after opinion of counsel on invalidity, the competitor may feel
that he can overcome any challenge of infringement. However, even if
the original issue patent is invalid based on the newly discovered prior
art, that does not preclude the patentee from seeking reexamination of his
patent to narrow the claims and overcome the prior art, possibly placing
the competitor in an infringing position.
What is a Competitor to Do? A competitor
needs to weigh the risks before acting. If a patent reexamination
and reissue proceeding newly creates an infringement situation for a
competitor, then a finding of infringement on a substantially revised
claim can only be found from the date of the reissued patent. Of
course, if infringement is based on a claim that is substantially the same
as it was in the originally issued patent, then infringement can be found
from the date of issuance of the original patent. The law also
permits a court to protect an innocent competitor's existing inventory
manufactured before the reissue date. But a reasonable royalty might
be required for the patent holder.
Limitations? Reexaminations are based
only on printed publications and issued patents. If other evidence
of prior art exists, it is not considered. So, in those instances a
lawsuit is needed. Once challenged and sustained, a patent becomes
entitled to greater deference of validity. Unlike a lawsuit,
there is no possibility of settlement which terminates the
proceeding. Also after the conclusion of the reexamination
proceeding, the party who challenged the patent may not bring any lawsuit,
or other proceeding, challenging the patent by raising any issues that
were, or could have been, raised in the reexamination proceeding.
How long does it take? A reexamination
proceeding is conducted with "special dispatch," and this
generally means it will take about 2 years, if it is ordered. Paying
the filing fees does not assure that a reexamination will take
place. A decision to order a reexamination will be made by the
patent office within 3 months from filing the request. The request
will be granted only if a prior art patent or printed publication raises a
substantial question of patentability not previously considered in the
original prosecution of the patent.
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This file last modified 05/23/07.
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