Patent Reexamination: What You Need to Know

Passage of the American Inventors Protection Act has prompted certain changes in the manner in which patent reexamination is conducted. More importantly, the new options under the reexamination statute absolutely dictate the consideration of new strategy in contested matters.

Reexamination is one method for correcting problems with issued patents. As a statutory remedy, it is intended to provide a "fast track" fix. In use, a third party or the patentee usually has uncovered evidence of published prior inventive activity which may affect the scope of the patent at issue.

However, in the past reexamination has not been unlike having a snake on your farm; the snake keeps rodents out of the barn, but you do not necessarily want to run into the reptile on any given occasion. Previously, many frustrations existed with the remedy, including gauging the impact of reexamination on co-pending and future litigation. Participants in reexamination benefit and also suffer from the expedited nature of re-exam. Further, exparte re-exam is unforgiving to third party re-exam requestors who fail in any aspect of their challenge of the patent at issue as they cannot participate past the initial stages of the process.

The AIPA provides for an optional Inter Partes Reexamination Procedure. Under the new statute third party requests for reexamination are made in much the same manner as before, noting the pertinency of the prior art and copying the patentee on the request. If the reexamination request is then granted, the proceedings are conducted as before, with several notable exceptions.

First, the third party re-exam requestor may file written comments on any Examiner's action or Patentee's response thereto. The re-exam requestor's comments are due after the filing of the Patentee's response and within time limits in appeals. The relevant time limits will be set by forthcoming regulations.

Second, third party requestors now can notice and participate in appeals before the Board of Appeals for the United States Patent and Trademark Office, although not before the Federal Circuit.

The outcome and arguments put forth now bind the parties to the reexamination. A third party requestor may not raise the same arguments of patent invalidity in a civil action. This is a fairly broad prohibition going to any ground of invalidity actually raised or that could have been raised during the inter partes reexamination proceeding. This "estoppel" also binds parties to civil actions. Unsuccessful litigants, or are precluded from bringing the same arguments of invalidity that were or could have been raised in a civil action, in an inter parte re-exam proceeding.

One last element of the new law is its applicability to any United States patent. The statute is only applicable to patents that issue from original applications filed on or after the AIPA was enacted; i.e., November 29, 1999.