Our Approach to Patent Reexamination

A reexamination is initiated when a requester submits prior art patents or publications to the USPTO with an explanation of how they apply to the claims of the challenged patent. So long as a substantially new question of patentability is raised, the USPTO puts the patent through a second examination. A special corps of patent examiners have been assigned to give careful consideration to such requests. The reexamination procedures are available so that the PTO can participate in eliminating invalid patents and improving the quality of enforceable patents.

Reexaminations resemble the original patent prosecution, including office actions and responses, but with compressed response periods and no opportunity for continuation practice. An ex parte reexamination is handled by the patent examiner and the patent owner, without participation of the requester after the proceeding is underway. An inter partes reexamination, on the other hand, allows the requester to comment on all patent owner submissions and to appeal adverse decisions while limiting the patent owner to written communications with the patent examiner.

Our reexamination work takes advantage of several major strategies:

1. Strengthen your own patent by putting it through ex parte reexamination or by filing for a reissue;
2. Extinguish third party patent threats by anonymously requesting reexamination of a patent of concern;
3. Defer or terminate litigation by filing an inter partes reexamination of a patent asserted against you.

In addition, we are often asked to represent patent owners who are faced with a patent reexamination. Each of these activities is described in further detail below.

We welcome the opportunity to discuss reexamination strategies with prospective clients who are contemplating patent litigation or who are facing the prospect of patent litigation. If you are interested in discussing how Bromberg & Sunstein can assist you in connection with patent reexamination, please contact a member of our Patent Practice Group.

Strengthen Your Own Patent

At Bromberg & Sunstein, our general approach to strengthening our clients' patent position involves filing continuation applications. Sometimes we encounter situations where a continuation application is not pending. Moreover, rule changes may create a time when continuations will not be as readily available in the USPTO.

Lacking a continuation application, a patent can be strengthened in a reexamination or by filing a reissue patent application. When our client becomes aware of prior art that may have an impact on the validity of its patent, we consider bringing the prior art to the attention of the USPTO for the purpose of obtaining a second review of the patent. It is more difficult to attack a patent in court if the prior art has already been reviewed by the USPTO. This is particularly true for a patent that has been twice approved by the USPTO. Reexamination and reissue both offer the possibility of this second stamp of approval.

Reexamination is limited in scope to review of prior art patents and publications. A patentee may pursue reexamination ex parte, that is without third party involvement. Advantageously, instituting the reexamination on certain issues raised by the prior art, should prevent third parties from seeking to bring a reexamination based on the same prior art. We work effectively with the patent examiner to maintain for our clients the broadest patent protection possible and to add additional claims when appropriate.

Another approach to strengthening your patent may involve the filing of a reissue application. A reissue application gives the patentee, if needed, the ability to fall back on a subsequent continuation or divisional application to further negotiate with the examiner for broad claim coverage. If the reissue is applied for within two years of issuance of the original patent, broader claims than those already issued may be sought. The filing of a reissue patent application requires identification of an error in the original patent such as claiming more or less than patentee had a right to claim. The scope of examination of a reissue patent application is more extensive than that of a reexamination. The USPTO may go beyond prior art patents and publications to address other issues of patentability as well. A patentee who survives reexamination or reissue gains enhanced prospects for litigation or licensing success.

Extinguish third party patent threats

For clients concerned about the patents of others, we have been able to use reexamination to disarm the patentee. Not wanting to brand our client as a target for patentee, an advantageous method of proceeding is to file an ex parte reexamination anonymously. Carefully prepared, strong, and extensive arguments are presented to the USPTO along with the closest prior art. This tactic is particularly effective early on in a long product development cycle so that consideration may be given to modifying the product depending on how the reexamination progresses. We have seen patents amended and narrowed on reexamination, thereby significantly reducing the risk of going forward with a product design.

Defer or terminate litigation

One of the most recent developments in reexamination practice is the advent of the inter partes reexamination. While use of this procedure has gotten off to a slow start, it has been very effective as can be seen in the table of pending inter partes reexaminations that our firm has created from USPTO data.

Early concerns that the third party requester was unfairly deprived of the right to appeal a USPTO adverse decision have been squelched by a change in the law. As of November 2, 2002, patentees and requesters both have the right to contest an inter partes reexamination to the USPTO Board of Appeals and to the Federal Circuit Court of Appeals.

Another concern with regard to inter partes reexamination is an estoppel that typically prevents relitigating validity of the patent with respect to prior art patent and publications. Inter partes reexamination requires a choice of forum for litigating these issues in the USPTO or the court. For many litigants, the millions of dollars to litigate these issues in a court is not a realistic option. For others, they may expect their strongest defense in court to be non-infringement. For both sets of litigants inter partes reexamination offers a relatively low cost option for possibly eliminating the patent or narrowing the patent. Narrowing due to amendment or arguments during the reexamination strengthens a non-infringement case. In view of growing experience with inter partes reexamination and the procedural advantages offered by inter partes reexamination, some clients may determine that their case would receive better treatment in such a reexamination.

Bromberg & Sunstein draws from its experience in patent practice and patent litigation to reach strategic decisions as to when to use inter partes reexamination. Many factors come into play including the prospects of success in the USPTO or the court, the timing, business considerations, the amount at stake, and the financial strengths of the parties. These and more are evaluated to arrive at a course of action most suitable for our client.

Representing Patent Owners

Patentees on the receiving end of a reexamination often come to Bromberg & Sunstein to marshall their patent through the process. We bring our expertise in both patent prosecution and patent litigation to bear on these reexaminations. Recognizing that amendments and statements made during reexamination may be used against the patentee, we work carefully on a strategy supportive of the patent's use in litigation. We coordinate the reexamination strategy with the litigation strategy. Typically, we avoid filing a patent owner's statement in ex parte reexaminations, thereby foreclosing further participation by the requester. In ex parte reexaminations, we generally meet with the examiners handling the case to facilitate reaching desirable claim coverage acceptable to our client and the USPTO.