Reexamination permits either a patent owner or third party to ask the United States Patent and Trademark Office (USPTO) to take a second look at an issued patent. There are a number of circumstances in which a company might want to do so. A patent owner may want to strengthen a patent before the launch of a product, or before asserting it either in litigation or as part of a licensing venture. A third party may be looking for a way to invalidate or narrow a patent without actual litigation, to impact an ongoing litigation or simply to have a better idea whether a patent will be a potential block to its future business plans. The key to reexamination is that the party requesting it must give the USPTO prior art, limited to patents and printed publications, that raise a "substantial new question of patentability.”
Two types of reexaminations are possible in the USPTO, ex parte and inter partes. A patent owner can request ex parte reexamination of a patent it owns, and a third party can request either ex parte or inter partes reexamination of any patent it does not own. Ex parte reexamination is primarily conducted between the patent examiner and the patent owner. Inter partes reexamination allows for greater involvement by the third party requestor but, if later litigation arises, the third party may not be able to raise defenses and counterclaims that could have been raised in the reexamination.
Reexamination may defer or eliminate the expense and distraction of litigation. If a patent is strengthened, a third party may be much more likely to take a license. If it is invalidated, or even narrowed, there may no longer be any potential infringement. At times, a federal district court may wait until the USPTO has had an opportunity to reexamine the patent before allowing litigation to proceed.
WilmerHale’s interdisciplinary Intellectual Property practice is uniquely positioned with the expertise to not only conduct reexaminations, but evaluate when they are likely to be productive. Over the past two years, we have filed more than 40 reexaminations, and defended and assessed many others. Our attorneys have the experience and judgment to help advise clients on the alternatives to litigation and devise action plans that suit each client’s individual needs in a given situation. In some cases, reexamination is not the best answer. Then, we are able to call on the breadth and depth of our intellectual property litigation team as needed.
Some of our recent experience in reexaminations includes the following:
- We requested 14 ex parte reexaminations on behalf of our client, a large wireless technology company, spanning a variety of technology areas.
- We filed 10 reexaminations (five inter partes and five ex parte) on behalf of our client, a global healthcare company, relating to dialysis technology. Two of these cases are involved in an ongoing litigation.
- We requested four inter partes reexaminations for a start-up biotech company involved in litigation, relating to methods of genetic engineering.
- We requested a second reexamination on a patent involved in litigation for our client, a world leader in silicon innovation. The litigation has been stayed pending the outcome of the reexamination.
- We narrowed the claims of a patent being asserted in litigation against our client, a lithium battery manufacturer, so that patent infringement was no longer a concern.
- After being sued on a patent concerning laser treatment, we filed a reexamination request on behalf of our client, a laser and pulsed light technology company. All claims were rejected as being unpatentable over the cited art and the litigation has been stayed pending the outcome of the reexamination. We have subsequently filed a second reexamination concerning the same patent.
- We filed three reexamination requests on behalf of our client, a large pharmaceutical company, for patents relating to nutritional beverage formulations.
- As co-counsel to a biochemical life sciences company, we filed an inter partes reexamination to invalidate a patent directed to basic methods of optical in vivo imaging.
- On behalf of a leading supplier of testing technology for semiconductor chips and electronics products, we requested a reexamination of a patent relating to a disk drive unit carrier. The patent was involved in a litigation.
- We are prosecuting two reexaminations, one inter partes and one ex parte, for a chemical company, who is a market leader in the healthcare industry.
- We requested a reexamination for a global medical technology company relating to a safety shield of a surgical needle.