The patent reexamination process was first established by an amendment of the patent and trademark laws in 1980. The purpose of the reexamination was to provide a less-costly and speedier alternative to litigation in cases that deal with the issue of patent validity by allowing the PTO to consider newly found prior art patents and printed publications.

STEP 1: The Cease and Desist Letter

The patent owner typically finds that our client has produced a product or provided a service that they believe infringes on a patent they hold. Read the cease and desist letter carefully. This determines the risk of federal litigation and the merits of the claims.

STEP 2: The File Wrapper

Before any opinion is given on the merits of a claim, we retrieve the file wrapper history of the patent from the United States Patent and Trademark Office. The file wrapper contains a record of the communications between the inventor of the patent and the patent examiner. These communications almost always contain important details that affect the relative scope of the patent.

For reexamination purposes, we examine the file wrapper. This done to see if the patent examiner missed an existing patent or publication material to the claims. What is important here is the filing date of the patent application. If the invention was described in a publication more than one year before the filing date, the patent is invalid. (see 35 USC § 102(b)). The term “publication” extends beyond circumstances in which the article was included in a book or magazine.

It has been held to include “publication” by placing the document in a library that is freely accessible to anyone who wants to visit. However, this is only if the document is included in the library’s indexing system (i.e., card catalog). Of course, the modern equivalent might be a web page search engine. If we discover prior art that is material to the claims of the issued patent, we would then consider whether the prior art would sufficiently restrict the claims to be of strategic advantage to our client. If so, we proceed to the next step.

STEP 4: The Reexamination Request

We prepare a detailed request for reexamination that explains in writing the pertinence and manner of applied cited prior art, in the form of patents or printed publications, to every claims for which reexamination is required and by paying the requisite fee. Within three months after the request is filed, the PTO determines whether the request raises a “substantial new question of patentability” that affects any claims of the patent, and the PTO then issues an order granting or denying the reexamination based upon that determination.

What is a Substantial Question?

A substantial question is present if the prior art reference is material, i.e., “where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patentable.” If the reexamination is ordered, the patent owner will be given two months to file a response, and the requester will have two months to file a reply to the patent owner’s response.

Hand off proceeding

After this reply, however, Smith & Hopen cannot file any other papers in the patent reexamination process. Thereafter, the patent is reexamined according to the general rules and procedures governing examination of applications for patent. At the conclusion of the reexamination, the PTO issues a “reexamination certificate” canceling any claims found unpatentable. Furthermore, it confirms any patentable claims and incorporating any patentable amended or new claims.

It should be noted that in November 1999, Congress enacted the Intellectual Property and Communications Omnibus Reform Act of 1999. This permits inter partes reexamination wherein the requester would have an expanded role in the reexamination proceeding. However, there are a few drawbacks. If our client wishes to utilize the inter partes method, its identity will be disclosed to the patent owner. However, under the traditional system, our client may remain anonymous.