What Is Patent Re-Examination?

January 23, 2023
- Patent Drafting & Illustrations
- Patent Prosecution

Patent re-examination is a proceeding to check the validity of a granted patent. The re-examination is conducted by a patent office after the patent has been granted. In simpler words, during re-examination proceedings, the validity of a granted patent is re-examined. This re-examination can be requested either by a patentee or a third party. Generally, re-examination is not bounded by time and it can be requested at any time during the lifetime of the patent

Patent Litigation & Re-Examination

A defendant who is involved in a patent litigation can request the USPTO office to re-examine the patent that is being litigated. Typically, the defendant will also mention the prior-arts or publications that were not considered during the first examination of the patent which can probably invalidate the patent.

Now, the patent litigation and re-examination in the parallel point out an issue i.e., the patent which is invalidated during re-examination could make a previous judgment of court in which the court awarded the patentee, the patent damages on account of infringement in-vital.

To overcome this, the accused infringer may request the re-examination of the patent that has been litigated and at the same time, he may request the district court to keep the judgment or proceedings of the litigation case pending till the response of re-examination. If the litigated patent gets invalidated during re-examination, there will be no further need for litigation proceedings.

As mentioned above, the re-examination requests are generally filed by the third parties which are involved in the infringement. However, the re-examination request can also be filed by the patentee himself. Now you must be curious to know why he would do so?! Such kind of requests is filed before the patentee sues any party for infringement so that he makes sure that the patent is valid in view of prior arts he may have found since the grant of his patent.

Re-examination Procedure

First, a request for re-examination is filed. The request can be filed at any time during the lifetime of the patent. For filing a re-examination request you must submit a “request for re-examination” that includes:

A statement that points out the substantial new question of patentability based on prior patents and publications.
Number and explanation of each claim for which you are requesting re-examination.
Copy of patents or publications on which you are relying.
Copy of the issued patent.
A certificate that a copy of the “request for re-examination” is served on the patentee. This is required in case the re-examination is not requested by the patent owner itself.
Certificate by the third party which is requesting the re-examination, certifying that the statutory estoppel provisions of 35 USC 351(e) or 35 U.S.C. 325(e) do not prohibit the requester from filing the re-examination request.

If the request raises a substantial new question of patentability, re-examination is ordered by the USPTO. As soon as the USPTO orders the re-examination, a new examiner is assigned, and the patent goes through examination just like the first examination.

If the claims get rejected in view of new prior arts or the raised question, the patentee has the option to cancel or narrow down the rejected claims. The patentee also has the option to add new claims which are not broader than the existing claims.

On the other hand, if the examiner makes his rejection as the final rejection, the patentee also has the right to appeal to the Board of Patent Appeals and Interferences (BPAI), USPTO.

Once, the re-examination is finished, a certificate of re-examination is issued. If all the claims are rejected during re-examination, the patent is invalidated and nullified. Earlier, the certificates of re-examination had kind codes as B1, B2, B3, etc. Since 2001, the certificates of re-examination have kind codes as C1, C2, C3, etc.

Re–examination Benefits

Re-examinations are cheaper than patent lawsuits or litigation cases.
The federal court presumes that a granted patent is valid and can only be invalidated if there is “clear and convincing” proof. However, during re-examinations, there are no such presumptions and hence, in the re-examination, it is much easier to invalidate a patent.
The re-examination request can be filed anonymously through a third party. On the other hand, lawsuits in court cannot be filed without the filing party’s identification. Hence, if a person fears that a patentee can accuse him of infringement, he can anonymously request for re-examination of the patent.
You can request for re-examination in parallel with the litigation and in most cases, the judges will keep the patent litigation pending till the result of a re-examination. This can give you the time to prepare your case and gather proof.
If a patent is not invalidated during the re-examination procedure, the USPTO office generally reduces the scope of claims of the patent. Hence, a product that was infringing a patent before re-examination may not infringe the patent after re-examination due to the reduced scope of claims.

Inter–Partes Re–examinations vs Ex–Parte Re-examinations

Inter-partes re-examinations are initiated by a third party, and the third party participates in the re-examination proceedings.

Whereas, in ex-parte examinations after initiating a re-examination request by a third party, the third party can not participate in the re-examination proceedings. The proceedings and communication strictly remain between the examiner and the patentee.

Ex-Parte Re-Examination Exceptions

The re-examination is executed before a panel consisting of three experienced examiners within a specialized unit of the USPTO. This panel is known as the central re-examination unit (CRU).
Generally, the re-examination prosecution closes after the submission of the first response by the patentee.
The time extensions for responding to communications by the USPTO office are not allowed in re-examination procedures.

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