At today’s session of BIO’s IPCC Conference, Gregory Morse of the Central Reexamination Unit of the US Patent and Trademark Office gave a presentation of the process for handling re-exams. Comparing ex parte and inter partes, Morse showed that the time for processing to first action is inching up although inter partes proceedings have not been around enough to give a good picture. He did say that the branch typically is made up of the best of the best examiners so quality of examination and proceedings is very high.
Chad Shear of Fish & Richardson pointed out that the time for inter partes reexamination is quite long and defendants will often try everything to slow down a parallel litigation case so that the USPTO can catch up and possible pass the litigation case since their (perceived) chances are better at the reexam level given the approximately 50% reversal rate by the federal circuit. Shear pointed out that juries are all about damages and willfulness, not the infringement itself.
Under Reexamination, each claim of a patent is presumed valid under 35 U.S.C. 282 and may be enforced notwithstanding the presence of a pending reexamination proceeding. Although litigation may move forward in parallel with a reexamination proceeding, at the district court’s discretion, the results of the reexamination proceeding may have an effect on the litigation. To proceed with a reexamination, a request for reexamination must establish the existence of at least one new technological teaching affecting any claim of the patent for which reexamination has been requested that was not considered by the Office in a prior Office proceeding involving the patent (substantial new question). The SNQ is established based on prior patents and/or printed publications.
Ex Parte Reexamination
A proceeding in which any person may request reexamination of a U.S. Patent based on one or more prior patents or printed publications. A requester who is not the patent owner (i.e., a “third party requester”) has only limited participation rights in the proceeding. [MPEP 2209]
Inter Partes Reexamination
A proceeding in which any person who is not the patent owner and is not otherwise estopped may request reexamination of a U.S. Patent issued from an original application filed on or after November 29, 1999 based on one or more prior patents or printed publications. Both patent owner and third party requester have participation rights throughout the proceeding, including appeal rights. [MPEP 2609]
What are the risks to reexamination? In reexam, the patentee can throw in additional claims carefully crafted around the art you might want to use to invalidate the patent. It is not unusual for a patent to come out of reexam upheld but with many additional claims, which are then added to the lawsuit against you.
What favors reexam for a defendant? First, what court will you be sued in? Is it an unfavorable venue? Second, if the art is extremely technical, your chances are better in reexam than with a jury that will get frustrated by the technology. Finally, do you have a good “story” to tell so that the jury can understand your actions.
What if the inventor won the Nobel Prize (or is otherwise a really favorable patentee)? You want to be in the USPTO.
See reexamination historical statistics for requests for reexamination filed since 7/1/1981 (for ex parte) or since 11/29/1999 (for inter partes) here:
