Re-examination: a Dagger and a Shield for Impacting on IP value

Intellectual Asset Management's "IP Value 2010 - An International Guide for the Boardroom" provides numerous articles related to general intellectual property issues that span the world and by region/country.  The above-titled article by Patrick C. Keane of Buchanan Ingersoll & Rooney PC is one of the articles focused on the United States.  The following is an excerpt from this article:

Re-examination of a granted US patent can be a powerful procedural weapon that can galvanise or destroy a patent’s value. Everyone responsible for driving a company’s return on research and development investment should be familiar with its power. A recent study by The BTI Consulting Group, Inc highlighted the need for top management to embrace cost-control as a risk management tool. Re-examination can be part of an effective cost-control strategy for risk management when dealing with IP issues. Third parties can use re-examination to attack a competitor’s valued patent and patent owners can use re-examination to strengthen a patent’s armour and render it more impervious to attack. Thus, re-examination has achieved prominence as a weapon which can directly impact on the market value of a company’s IP portfolio.

US Patent and Trademark Office (USPTO) records confirm that the number of re-examination proceedings has dramatically increased. The annual number of re-examination filings has risen by over 300 per cent since 2002 (from 150 total filings in 2002 to 680 total filings in 2008), and there are many reasons for this surge. For example, the increase followed the introduction in 1999 of a new form of re-examination proceeding allowing greater participation by a third-party re-examination requester. In addition, as of 2002 all re-examination proceedings can be directly appealed from the USPTO to the Court of Appeals for the Federal Circuit (CAFC), making re-examination a viable tactical consideration.

Re-examination is a powerful procedural weapon that can be used to enhance the value of a company’s own patent portfolio or to undermine the value of a competitor’s portfolio. Re-examination proceedings should be considered on a case-by-case basis as part of a comprehensive IP strategy to enhance a company’s return on research and development investment.

Access this and the remaining articles here.

Comments

[Trademark Litigation]

Here is a similar story

In the old days, to be the head of intellectual property at an organisation probably meant looking after its filing operation, ensuring the renewals were done on time, deciding when and where to enforce, and keeping an eye out for the latest legal developments. How times change.

[patent litigation]

I'm glad that someone is drawing attention to this issue. Abuse of reexamination, with harassing purpose or result, is indeed a growing problem in patent litigation (and one that could well be aggravated if the SCOTUS does rule in favor of Microsoft over i4i, thereby weakening the traditional presumption of patent validity). Moreover, such abuse unjustifiably taxes the resources not only of patentees, but also of the USPTO.
http://www.washingtonpost.com/blogs/post-tech/post/qanda-small-inventors-raise-patent-reform-concerns/2011/03/28/AFLJ9NpB_blog.html