12/07/2009 02:41:36 PM EST
Reexaminations--Fertile Ground in the Changing Landscape of Patent Law
Traditionally, patent allowance rates in the USPTO have been in the high 60 percent range to over 70 percent. However, in recent years, there has been a sharp and continued decline. Defendants and potential defendants are well aware of the USPTO’s low patent allowance rate and are increasingly using reexamination as a tool in their defensive arsenal in addition to, or in lieu of, claiming patent invalidity in court. In this Analysis, David Tannenbaum, Ross Viguet, Thomas Kelton and Nathan Rees discuss the pros and cons of reexamination. They write:
Patent reexamination, whether ex parte or inter partes, essentially comprises a procedure by which the USPTO examiner corps is tasked with taking a second look at the patentability of claims of a previously-issued patent. Since an issued patent has already undergone an examination by a qualified examiner, one might suppose that few patents would be found to have issued improperly the first time. Thus, one might expect the confirmation rate in reexaminations to be high. However, such an expectation is proving to be wrong. For example, as of December 31, 2008, there have been a total of 544 inter partes reexaminations granted since the inception of the inter partes reexamination procedure (November 29, 1999) with only 44 inter partes reexamination certificates (concluding the inter partes reexamination proceedings with respect to the patent under reexamination) having been issued. Of the 44 inter partes reexamination certificates issued, all claims were canceled (or disclaimed) in 31 inter partes reexamination certificates (70%), some claims were changed in 9 inter partes reexamination certificates (21%), and all claims were confirmed in only 4 inter partes reexamination certificates (9%). Clearly, the USPTO practice of refusing allowance of the majority of patent claims extends to reexamination, despite the fact that claims under reexamination have previously passed examiner scrutiny.
The authors' recent experience is that it does not appear to make a substantial difference whether the reexamination is ex parte or inter partes, with respect to whether a patent's claims are, at least initially, rejected in a reexamination proceeding. Any deference to the patent claims and their previous examination that one may have expected does not seem to be present under current USPTO practice.
Ex Parte Reexamination Versus Inter Partes Reexamination
Although ex parte reexamination is available for all patents during their enforceability, inter partes reexamination is only available for "a patent which issued from an original application ... filed on or after November 28, 1999 ... " This limitation on the availability of inter partes reexamination has been interpreted to encompass not only "original" patent applications, but also any patent application filed on or after November 28, 1999 (e.g., continuation, continuation-in-part, and divisional applications).
Ex parte reexamination may be initiated by the patent owner, a third party requester, or by the Director of the USPTO. Although, like ex parte reexamination, inter partes reexamination may be initiated by a third party requester, the patent owner is expressly prohibited from initiating an inter partes reexamination. Moreover, unlike ex parte reexamination, there is no express provision for the Director of the USPTO to initiate an inter partes reexamination.
While a third party requester may initiate either an ex parte or inter partes reexamination, such a third party's participation in an ex parte reexamination ends once substantive examination begins. In contrast, the third party requester in an inter partes reexamination is permitted to submit comments each time the patent owner files a response to an Office action, is permitted to file an appeal and cross appeal, and is permitted to respond to patent owner's Appeal Brief.