Reexamination and review
I have conducted numerous reexamination proceedings, including many responses to office actions, requests for reexamination, declarations, appeals and oral arguments. My experience in litigation is critical in any of these Patent Office reviews. A Patent Office review does not require litigation, but often stems from a request by a party to an infringement lawsuit. The review usually requires a stay of the litigation. The litigation will be influenced by the results of the review. Even if the patent survives the Patent Office review, claim construction rulings developed in the reexamination can affect the litigation when it resumes.
Positions taken in the litigation can influence the Patent Office’s review, and vice versa. Both will likely involve the same prior art. Positions taken by a patent owner in a reexamination must not adversely affect the patent owner’s infringement contentions in the litigation. Positions taken by a requestor—often a defendant in litigation—must not damage its infringement contentions or any invalidity contention not addressed in the reexamination.
We do these proceedings on a billable or a fixed fee basis, so that the client knows at the outset what the cost will be, and can make an intelligent, informed decision whether to proceed.
There are several ways in which a patent can be reevaluated after it has been issued. (See my October, 2009,Intellectual Property Today column, “Reexamination Tactics.”) Although these reevaluations were ostensibly developed for good reasons, in many cases they are used for delay, or to give a litigant two opportunities to attack a patent, once in the Patent Office and again in litigation. In any case, anyone involved in a review of a patent should be sure to retain an attorney experienced in litigation, because litigation influences the review and vice versa.
A request for reexamination can be filed by different parties, depending on which kind of procedure is being used. So a party that has been accused of infringement, or is worried about being accused of infringement, or thinks that a patent is stepping on its business area, may file a reexamination in order to have the patent reanalyzed in light of some information the party believes the Patent Office should have considered but did not. Or there might be new information that a party wants to have considered. There are time limitations on all these methods of review. Here is a description of the types of review that are available. See www.uspto.gov/aia_implementation/bpai.jsp.
Ex parte reexamination – Can be filed by anyone, including by the Patent Office itself. These reexaminations are conducted between the patent owner and the examiner once a request is granted; the requestor has no further involvement. Ex parte reexaminations are not speedy. For one of our cases, ex parte reexaminations begun in 2009 were not completed until 2014. This procedure has been heavily abused by defendants. Only patents and printed publications can be submitted, and only §§ 102 and 103 are considered. See 35 U.S.C. §§ 301-307 and Part 37 of the Ccde of Federal Regulations.
Inter partes reexamination – This procedure was ended by the America Invents Act. It bears some similarity to the new inter partes review.
Inter partes review – This procedure, established by the America Invents Act, replaces the inter partes reexamination. An inter partes review includes testimony and discovery; that makes litigation experience even more important. The review is conducted by the Patent Trial and Appeal Board. It must be completed within eighteen months, but the grounds are limited to §§ 102 and 103. A patent owner cannot initiate this review. See 35 U.S.C. §§ 311-319, and 37 CFR Part 42, Subparts A and B.
Post grant review – This applies to patents issued after the America Invents Act became law. It must be initiated within nine months of issuance. The review is conducted by the Patent Trial and Appeal Board. Like the inter partes review, it must be completed within eighteen months, and the grounds are broader than the inter partes review because grounds for invalidity under § 112 may be asserted. A patent owner cannot initiate this review. See 35 U.S.C. §§ 321-329 and 37 CFR Part 42, Subparts A and C.
Transitional Program for Covered Business Method Patents – See the Patent Office’s website at www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/transitional-program-covered-business. This procedure will end in 2020, and is aimed at patents that claim inventions involving a financial product or service.