PATENT REEXAMINATION

by

Robert J. Yarbrough

©2000

Reexamination is a creature of statute, specifically 35 U.S.C. 301 et seq. The original reexamination language was added to Title 35 in 1980 and amended in 1984 and 1994. I am not aware that reexamination was allowed prior to that time. Regulations to implement the current (ex parte) reexamination appear at 37 CFR § 15.01 et seq.

Current Use of Reexamination

Reexamination is used to provide a reevaluation of an issued patent based on prior art not considered by the examiner in the initial patent issuance. It is particularly useful for patent holders when an alleged infringer raises prior art as a reason for invalidity as a defense in an infringement or declaratory judgement action.

The patent holder in such a situation has two choices: to slug the matter out before the court, or to request reexamination by the PTO and request a stay of the court proceedings.

The patent holder can request a reexamination and can have the PTO reconsider the application in light of the new prior art. The patent holder can amend claims to make the claims narrower in light of the prior art. The patent holder will make every effort to preserve the patent and to ensure that the reexamined patent will read on the alleged infringer’s accused device. At present, the patent holder has a substantial advantage in this process over the accused infringer, because only the patent holder can participate in the reexamination process to any significant extent.

Effect of Existing Reexamination

Once the reexamined patent is approved, the PTO’s decision is entitled to deference, just as any other administrative agency’s decision is entitled to deference.

Existing Reexamination Process

The basic procedures of the current reexamination statute are as follows, from 35 U.S.C. §§ 301-307 and 37 CFR §§ 1501-1.565:

1. A person will request a reexamination. That person can be the patent holder, or it can be any third party, such as an accused infringer. The request must include the necessary fees, the prior art that was not previously considered, and an explanation as to why the prior art is pertinent to one or more claims of the patent.

2. Within three months, the commissioner will determine whether the new prior art presents a “substantial new question of patentability.” The consideration is limited to other patents and printed publications. It does not address questions of actual inventor, best mode, public use or sale prior to one year, or any of the other challenges to patentability. It only deals with prior art patents and printed publications.

3. If the commissioner decides that there is no “substantial question” of patentability, the matter is over and cannot be appealed. The patent holder presumably has the benefit of the presumption of validity in light of the new prior art in any subsequent court proceeding.

4. If the commissioner decides that there is a substantial question of patentability, the reexamination will proceed. The patent holder is given at least two months to present any arguments or amendments concerning the new prior art. If the reexamination results from a third party request, the PTO will give the third party at most two months to provide a reply to the arguments and amendments offered by the patent holder. At this point, the third party’s participation in the reexamination stops.

5. The reexamination will then proceed just as an initial examination, presumably with office actions, responses, and interviews with the examiner. A third party is not allowed to participate in the process. The third party also is not privy to any of the correspondence or conversations between the examiner and the patent owner.

6. If the patent holder is not satisfied with the results of the reexamination, the patent holder can appeal to the Board of Patent Appeals and Interferences. The patent holder can appeal the determination of the Board to the Court of Appeals for the Federal Circuit.

7. The third party that requested the reexamination has no right of appeal.

8. At the termination of all appeals, the commissioner will issue a “certificate” of the results of the reexamination. The certificate is the final determination effectively changing or affirming the patent.

The reexamination process, particularly for third parties, offers no realistic alternative to a court action to challenge a patent and is heavily weighted in favor of the patent holder through the denial of participation to the third party in the reexamination.