Patent Reexamination

The reexamination system was first established by an amendment of the patent and trademark laws in 1980.  The purpose of the reexamination was to provide a less-costly and speedier alternative to litigation in cases that deal with the issue of patent validity by allowing the PTO to consider newly found prior art patents and printed publications.  

STEP 1: The Cease and Desist Letter

The patent owner typically finds that our client has produced a product or provided a service that they believe infringes on a patent they hold.  The cease and desist letter must be read carefully to determine the risk of federal litigation and the merits of the claims.  

STEP 2: The File Wrapper

Before any opinion may be given on the merits of a claim, the file wrapper history of the patent must be obtained from the U.S. Patent and Trademark Office.  The file wrapper contains a record of the communications between the inventor of the patent and the patent examiner.  These communications almost always contain important details that effect the relative scope of the patent.

STEP 3: The Prior Art Search

For reexamination purposes, we examine the file wrapper to see if the patent examiner did not review an existing patent or publication material to the claims of the patent application.  What is important here is the filing date of the patent application.  If the invention was described in a patent or publication more than one year before the filing date, the patent is invalid. (see 35 USC § 102(b))  

The term "publication" extends beyond circumstances in which the article was included in a book or magazine.  It has been held to include "publication" by placing the document in a library that is freely accessible to anyone who wants to visit, provided that the document is made accessible by virtue of its being included in the library's indexing system (i.e., card catalog).  Of course, the modern equivalent might be a web page search engine.

If we discover prior art that is material to the claims of the issued patent, we would then consider whether the prior art would sufficient restrict the claims to be of strategic advantage to our client.  If so, we proceed to the next step.

STEP 4: The Reexamination Request 

We prepare a detailed request for reexamination that explains in writing the pertinence and manner of applied cited prior art, in the form of patents or printed publications, to every claims for which reexamination is required and by paying the requisite fee

Within three months after the request is filed, the PTO determines whether the request raises a “substantial new question of patentability” that affects any claims of the patent, and the PTO then issues an order granted or denying the reexamination based upon that determine.  A substantial question is present if the prior art reference is material, i.e., “where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable.”   

If the reexamination is ordered, the patent owner will be given two months to file a response, and the requester will have two months to file a reply to the patent owner's response.  After this reply, however, Smith & Hopen cannot file any other papers.  Thereafter, the patent is reexamined according to the general rules and procedures governing examination of applications for patent.  At the conclusion of the reexamination, the PTO issues a “reexamination certificate” canceling any claims found unpatentable, confirming any patentable claims and incorporating any patentable amended or new claims

It should be noted that in November 1999, Congress enacted the Intellectual Property and Communications Omnibus Reform Act of 1999, permitting inter partes reexamination wherein the requester would have an expanded role in the reexamination proceeding.  However, there are a few drawbacks.  If our client wishes to utilize the inter partes method, its identity will be disclosed to the patent owner.  However, under the traditional system, our client may remain anonymous.  Furthermore, the government fee alone for the inter partes proceeding is $8,800.00 versus $2,520.00 for the traditional system.  Nevertheless, inter partes proceedings should provide an invaluable option to participate in the reexamination process.