USPTO reexaminations are intended to streamline the complaint process and reduce the burden on federal courts. They have been around in some form for 30 years, but are still little known and little used because of several limitations.

One limitation is that they can be based only on prior art, the same criteria the patent office uses to grant patents in the first place, specifically “prior written art consisting of patents or printed publications.” A patent office reexamination can’t use legal discovery or depositions the way a lawsuit could. So if a challenger’s issue is prior manufacture or sale of the technology, for example, or a suspicion that the patent holder misrepresented facts to the patent office, these arguments can’t be raised in a reexamination.

WHICH TYPE OF REEXAM TO USE?

The USPTO offers two types: “ex parte” and “inter partes,” which are quite different. “Ex parte,” the original form, was instituted in 1981 and can be used to attack any issued patent. “Inter partes” reexamination was authorized by Congress in 1999 and is limited to challenging patents filed after Nov. 29, 1999.

A bigger difference between the two is whether the challenger is involved. “Ex parte” means “without” the challenger involved. The challenger isn’t allowed to see or comment on the patent holder’s response to the prior art issue, which gives the patent holder the upper hand.

“It’s a little like firing a cruise missile without control,” comments Michael Brown of Brown & Michaels PC in Ithaca, N.Y. (www.bpmlegal.com), who hasn’t brought any patent office reexaminations himself, though others in his firm have. “Unless you have absolutely solid prior art, the examiner will examine the art you have cited and issue an office action. That office action goes to the patent holder, who then responds to it. If the patent holder can amend their claims, you have allowed the patent holder to keep their patent. It’s this lack of control that bothers some people,” notes Brown.

“Inter partes” reexamination means “between” the patent challenger and the patent holder and offers a more level field. The challenger can see the patent holder’s response and file comments on it in return. “The requestor is allowed to remain fully active in the proceeding and continue to raise arguments against the patent holder as the patent holder attempts to overcome the cited prior art,” Grossman explains.

Not surprisingly, both the overall success rate and patent “kill” rate for “inter partes” reexaminations are higher. Inter Partes Reexamination Certificates favor the challenger 88% of the time vs 77% for “ex parte.” “Inter partes” also cancels four times more patents—45% for “inter partes” vs 11% for “ex parte.”

The mixture of outcomes for the two types is also different. “Inter partes” certificates have cancelled patent claims 45% of the time, amended patent claims 43% of the time, and upheld them 12% of the time. “Ex parte” certificates, on the other hand, have cancelled patent claims only 11% of the time; amended them 66% of the time; and upheld them 23% of the time. So the patent survival rate for “ex parte” is nearly double that of “inter partes.”

It’s sometimes hard to pick clear winners because reexamination certificates can combine all three outcomes. “If the

patentee has to amend his claims so that your product no longer infringes, you win, even if the patent survives the reexamination,” notes Brown.

Even with a mixture of outcomes, both types of patent office reexaminations are highly successful for the challenger in terms of either canceling or amending patent claims. The reason, intellectual property lawyers say, is that the USPTO is so over-loaded. It has a backlog of a year and a half of applications to review (695,086 applications as of June 2011) and only 6,775 examiners to review them, so a lot of patents get approved that shouldn’t have been.

Excerpts from

Posted on July 21, 2011 by Jan Schut