Patent reexamination

Chapter 31 provided that anyone could request the Patent Office at any time to reexamine an issued patent by citing new references. Written arguments could be submitted, the patentee could narrow his claims, and the Patent Office would reexamine the patent in the light of this new information. If, during litigation, the validity of a patent were attacked because of new references that weren t before the Patent Office, Chapter 31 required that this too go to the Patent Office for reexamination and for an advisory opinion by the examiner. This is based on the statistic that somewhat over 70% of the patents that the courts have held invalid over the past few years were held invalid on the basis of references that were not before the Patent Office, and presumably if the Patent Office had had the references, they would not have issued the patent. Reexamination under Chapter 31 would be limited to published references, and thus there would be no need for discovery or depositions or cross-examination. It would be an inexpensive procedure that would cover almost all of the reasons for invalidity that could arise in a fullblown opposition proceeding. 

The most commonly used patent reexamination procedure before the USPTO was instituted in 1980-1981. This procedure is referred to as the ex parte reexamination procedure, and its basic framework is outlined in the patent laws 35 U.S.C. 301—307.55 Some key features of the patent laws regarding ex parte patent reexamination are as follows ... 

The patent reexamination proceeding is then conducted between the patent holder and the USPTO examiner handling the reexamination. 

Since 1981, there have been >9000 requests for ex parte patent reexaminations with >500 per year in recent years. The patent office has granted over 90% of the reexamination requests made to it, with approximately 75% of the reexamined patents being at least partially modified if not completely revoked. While this cannot be taken as statistical reflection of all patents issued by theUSPTO, since the challenged patents are a selected group to begin with it does provide those wishing to challenge issued patents by an ex parte reexamination at least some reason to be optimistic.61... 

Inter partes patent reexamination proceedings were added to the federal patent laws in 1999, and although significantly lagging the number ex parte reexamination requests, the growth rate in applications is impressive (Figure 2.14). 

OG/PLUS USPTO Research PubHcations CD-ROM versioa of the USPTO Official Gazette covers 1990—preseat iacludes searchable subfiles PATENTS ISSUED, images of O.G. pages searchable by bibHographic fields and first page abstract PATENT STATUS Ede, track-iag post-issuance actions, eg, reexaminations, corrections and LITALERT, containing records of patent suits filed by U.S. District Courts with the USPTO updated monthly six disks/year... 

Patent Reissue and Reexamination. Reissue proceedings and reexaminations proceedings require the resubmission of the issued patent to the U.S. PTO and should be expedited by the U.S. PTO. However, each requires the additional expenditure of substantial funds and a loss of time in the active life of the patent. 

A request for reexamination may be made by the patentee, a third party, or the Commissioner of the Patent and Trademark Office whenever a new question of patentabiUty arises. This new question of patentabiUty has to be raised in the form of a pubHcation such as a journal article or a patent which was not considered during the prior prosecution. Reexarnination is a more expedited and economical means of receiving a judgment on whether or not a patent is vaUd in advance of Htigation. 

It is generally agreed that there should be some change in the law to facilitate public participation in the patent examination process. This is a result of the growing volume of the scientific literature and the increasing complexity of the sources to be searched. A person who knows of reasons why a patent should not have issued should be able to bring these reasons before the Patent Office, and the Patent Office should reexamine the patent and review its prior decision. These reasons are almost always published literature references—called prior art in the trade—that the patent examiner missed in the search. 

There have been many proposals on how to accomplish reexamination. Most foreign countries have a relatively simple procedure, whereby for a few months after a patent is published some third person can file with the Patent Office, in writing, the reasons why the Patent Office should not grant the patent. The opposer and the patent applicant then... 

As a result of a lot of thinking by a lot of people, there has emerged an alternative proposal that attempts to consolidate the best of the opposition and reexamination procedures to achieve the beneficial effects and yet to reduce the costs of not only oppositions but also patent litigation. This alternative proposal has provided the focus for attempts to improve S.2255. This proposal has come to be known as "Chapter 31 because that was its place in a bill introduced in the Senate by Senator Fong. It had broad support from industry and bar associations, but it didn t carry in the Senate in its original form. 

Finally, a patent may be subjected to a reexamination procedure in which the issued patent is reexamined in view of additional prior art not of record in the original prosecution tile for that patent application. The reexamination procedure can proceed by different routes, depending on the circumstances, and it can be a very useful tool for patentees but more likely for those who wish to challenge one or more claims in an issued patent but who do not wish to engage in full scale litigation to do so (see section 2.2.c). 

Any person at any time (during the enforceable life of the patent) may file a request for the reexamination of a U.S. patent.56 This includes other parties, the patentee or even the USPTO itself, although most ex parte reexamination requests are filed by other parties. Reexamination requests filed by parties other... 

The term ex parte is Latin legalese for on one side only (Black s Law Dictionary, 6th ed.). In the context of this discussion, it means that the actual reexamination process, once begun, is conducted between the patent holder and the USPTO only. This is in contrast to the inter partes proceeding that to a much greater extent involves the party requesting the reexamination as well as the holder of the patent and the USPTO. While an ex parte reexamination can be initiated by the patent holder, an inter partes action cannot since there would be no other party to occupy the other side. The ex parte reexamination procedure is described in detail in Chapter 2200 of the MPEP. 

Any person includes corporations and/or governmental entities. Very important the any time aspect of the reexamination proceeding before the USPTO means that a party does not have to wait until she is threatened with an infringement allegation or action before she requests the reexamination of a patent. 

The name of the person who actually files the request for reexamination will not be held in confidence but the actual party in interest need not be revealed. MPEP 2212 provides Some of the persons likely to file requests for reexamination include the patentees themselves, licensees, potential licensees, attorneys without identification of their real client in interest, infringers, potential exporters, patent litigants, interference applicants, and International Trade Commission respondents. ... 

Within three months following the filing of a request for reexamination under the provisions of section 302 of this title, the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request, with or without consideration of other patents or printed publications. On his own initiative, and at any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 of this title. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office, (emphasis added.)... 

If the USPTO finds that a substantial new question of patentability has been raised, a reexamination will be ordered, and the applicant will have at least 2 months to file a reply including any claims that she wishes to cancel or amend. A copy of the patentee s response must be served to the party requesting the reexamination procedure and that party has 2 months to file a response to the patent holder s statement. Any claim amendment cannot broaden any of the claims of the patent. 

Any final action unfavorable to the patentee by the patent examiner may be appealed by the patent holder to the Board. Further appeal by the patent holder to the Court of Appeals of the Federal Circuit is possible (35 U.S.C. 141-147). The right of appeal in the ex parte reexamination proceeding is limited to the patent holder and not the reexamination requestor.60... 

The proceedings of reexaminations can be viewed on the USPTO s Public Patent Application Information Retrieval (PAIR) web page. 

The original method by Cookson et al. for the preparation of the ocimenones (89) has been reexamined by Weyerstahl et al., who foimd that the proportion of ( )-89 to (Z)-89 is 3 1 rather than 9 1, as originally reported. This C5 + C5 coupling which Cookson (and de Villiers et al. ) carried out with isoprene and the acid chloride of senecioic acid (59) (cf. Vol. 4, p. 47, Refs. 160 and 161), has also been realized by Julia (cf. Vol. 4, p. 473, Refs. 158 and 159), who has published more recent developments. A Russian patent claims that the oxidation of the allene 99 with pyridnium chlorochromate followed by isomerization with powdered potassium hydroxide gives (Z)-tagetone [(Z)-88] stereoselectively. 

In the previous review1 there was discussed a claim in the patent literature that a 1,2-benzisothiazoline could be produced from a reaction between an N-benzyl-substituted sulfonamide and trichloromethanesulfenyl chloride in the presence of base. Reexamination of this reaction has failed to confirm the production of benzisothiazolines.20... 

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