Patent Reexamination Procedure

Patent Reexamination is a procedure by which the USPTO reconsiders the validity of the claims of an issued patent in view of prior art which was not considered during the original prosecution.  This article will discuss the patent reexamination procedure, and a later post will discuss some of the advantages, disadvantages, and possible consequences clients must consider when filing for reexamination.

Challenges to a patent based on grounds other than prior art not considered during the original prosecution, such as existing products, incorrect inventorship, enablement, or indefiniteness of the patent, are outside the scope of reexamination proceedings.  The procedure is available to any patent owner or any third party requester at any time during the enforceable life of a patent.[1]  This means that any party, including the inventor, an accused infringer, or even the USPTO can initiate the procedure for reexamination.

An important consideration to keep in mind is that a third party requestor cannot participate in a meaningful way during an ex parte reexamination proceeding and is limited to one statutory reply prior to examination.  The Reexamination procedure which allows participation by a third party during examination, known as Inter Partes Reexamination, was recently replaced by the Inter Partes Review procedure under the new America Invents Act.  The new Inter Partes Review procedure will be a topic for future discussion.

An Ex Parte Reexamination procedure is initiated by filing a Request for Reexamination which must identify a “substantial new question of patentability” affecting one or more claims of the patent based on qualifying prior art patents and publications.[2]  Within 90 days of the filing of the Request, the USPTO must determine whether the submitted prior art raises a substantial new question of patentability and enter an order granting or denying the request.[3]  A determination denying the Request is final and non-appealable.  A prior art patent or printed publication raises a substantial new question where:

a)      “A reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable;” and

b)      “the same question of patentability as the claim has not been decided by the office in a previous examination or pending reexamination of the patent or in final holding of invalidity by the Federal Courts in a decision on the merits involving the claim”[4]

The requirement of a substantial new question of patentability does not require a prima facie showing of unpatentability.  All that is needed is at least one patent or printed publication that applies to at least one claim of the patent to warrant reexamination of all the claims in the patent.  In fact, even patents or publications which were previously cited by or to the Patent Office may be sufficient to meet this requirement.  The requirement may be met by previously cited prior art, where the prior art is presented or viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s), in view of material new argument or interpretation presented in the request.[5]

If the reexamination request is granted, the patent owner has a two month window to file a statement responding to the new question of patentability and/or amending the claims.  This statement is optional, and most patent owners opt not to file this.  If it is filed, the requester then has a two month window to file a reply statement if desired.  From this point, a first action on the merits should be issued within one month from the expiration of the patent owner’s two month statement window or the requester’s two month reply statement window, depending on whether a statement was filed by the patent owner.  The patent is then examined with issued office actions and patentee’s responses to the office actions.

Upon conclusion of the reexamination proceeding, the examiner will issue a Notice of Intent to Issue Ex Parte Reexamination Certificate setting forth the status of each claim (ie., canceled, confirmed, amended).  The patent owner may appeal any decision adverse to the patentability of any original or proposed amended or new claim of the patent within the USPTO and/or in court.

[1] 35 USC § 302, 37 CFR 1.510

[2] 35 USC § 303 (2006)

[3] Id.

[4] MPEP §§ 2242; 2642

[5] Id. 


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