Reexamination of Issued Patents

what they are, how they work

Purpose: To determine the issue of patentability of one or more claims of an issued U.S. patent in view of prior art patents and printed publications.

Occurrence: Extremely rare. Less than 1% of issued U.S. patents are reexamined.

Tribunal: Conducted at the examiner level.

How provoked: Filing a reexamination request with the USPTO. If request granted, a reexamination is declared.

Requester Eligibility:

• The inventor.

• The patent assignee.

• An infringer.

• A potential infringer.

• Anyone else.

• Can be instituted by the USPTO itself.

Requester Identification:

• Real party in interest can remain undisclosed.

• Requests under attorney's name only are not uncommon.

Timing:

• Any time during the enforceability period of an issued patent.

• The enforceability period of an issued patent is its term plus the six years, and beyond if a patent enforcement action was filed before the end of the six-year statute of limitations period.

• (A patent cannot be infringed after its term has expired, but a patent owner has up to six years after its term to enforce the patent against pre-expiration infringements.)

Reexamination types:

• Non-participatory ex parte.

• Participatory inter partes.

USPTO Reexamination filing fees:

• $2,520 ex parte request.

• $8,800 inter partes request.

• Additional if directed to more than three independent claims or more than twenty claims total.

• Attorney fees separate.

Eligible prior art:

• Prior art patents and printed publications.

• Affidavits or declarations explaining the contents or dates of the prior art now permissible.

Ineligible prior art:

• Anything not a prior art patent or printed publication.

• (Website content qualifies under the printed publication category.)

Ineligible bases:

• Failure to disclose best mode.

• Fraud on the patent office.

• Failure to disclose.

• Prior invention by another.

• Public use/sale more than one year prior to the patent’s effective filing date(unless such occurrences are sufficiently described in one or more prior art patent or printed publication).

Request requirements:

• Must explain how the disclosures of each cited prior art item apply to one or more of the patent’s claims.

• Must provide English translations of all pertinent parts of a non-English patent or printed publication.

• May (and should) point out claims not supported by an earlier foreign or U.S. application whose filing date is claimed. Intervening prior art against such claims can be cited.

Reexamination Declaration:

• A reexamination will be declared if the examiner finds that one or more substantial issues of patentability exist.

• If the examiner instead denies the reexamination request, the requester has the option of petitioning the Director for a review of the examiner’s decision.

Reexamination Consequences

• Patent invalidated (all claims rejected)

• Patent limited (claims narrowed, less than all allowed)

• Patent remains enforceable during reexamination process
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