Pre-litigation Strategies: Patent Reexamination

The following excerpt is from an article by Robert E. Krebs and Hal J. Bohner that originally published in the Spring 2004 edition (Vol. 4, No. 1) of Thelen Reid's Intellectual Property and Trade Regulation Journal:

The costs of patent litigation – both in terms of time and money – have been well documented. For example, a patent lawsuit can require several years of concerted effort by company management and outside counsel to complete pretrial discovery and trial. Then, the trial may be followed by an appeal to the Federal Circuit Court of Appeals.

The costs and commercial uncertainty of patent litigation have been addressed by Congress in the "21st Century Dept. of Justice Appropriations Authorization Act of 2002." The Act amended a procedure, first created by Congress in 1980, for reexamination of patents in the U.S. Patent and Trademark Office (PTO). The reexamination procedure was expanded by Congress in 1999, when it provided for Inter Partes reexamination.

Ex Parte Reexamination

In an Ex Parte reexamination, either a challenger or patent holder may seek reexamination of a patent based on patents or printed publications. The requester files the request for reexamination and within three months the PTO determines whether a substantial new question of patentability exists. If so, the PTO orders reexamination of the patent. A determination that there is no substantial new question is final and non-appealable.

Inter Partes Reexamination

Inter Partes reexaminations are similar to Ex Parte proceedings in some ways. Both are initiated by a request for reexamination. Also, the only ground for seeking reexamination under either process is prior art consisting of patents or printed publications. Furthermore, at the outset, the PTO determines whether the request raises a substantial new question of patentability.

If the PTO determines that there is a substantial new question of patentability, an Inter Partes reexamination is ordered. Thereafter, just as in an Ex Parte proceeding, the third-party requester will be provided with a copy of Office Actions issued by the PTO. Also, just as in an Ex Parte proceeding, the third-party requester will be provided a copy of the patent owner's responses to Office Actions. However, unlike an Ex Parte proceeding, the third-party requester may reply to the Office Actions and to the patent owner's responses.

See the full article here.