Robert J. Yarbrough
NOTE: The law of reexamination changed when the America Invents Act was signed into law on September 16, 2011. For a discussion of reexamination under that statute, see "Patent Remedies without going to Court."
Reexamination is a creature of statute, specifically 35 U.S.C. 301 et seq. The original reexamination language was added to Title 35 in 1980 and amended in 1984 and 1994. I am not aware that reexamination was allowed prior to that time. Regulations to implement the current (ex parte) reexamination appear at 37 CFR § 15.01 et seq.
Ex Parte Reexamination
A. Nature of Ex Parte Reexamination
Reexamination is used to provide a reevaluation of an issued patent based on prior art patents and printed publications not considered by the examiner in the initial patent issuance.
The patent holder can request a reexamination and can have the PTO reconsider the application in light of the new prior art. The patent holder can amend claims to make the claims narrower in light of the prior art. The patent holder will make every effort to preserve the patent and to ensure that the reexamined patent will read on the alleged infringer’s accused device. At present, the patent holder has a substantial advantage in this process over the accused infringer, because only the patent holder can participate in the reexamination process to any significant extent.
B. Use of Ex Parte Reexamination
An ex parte reexamination is binding on the patent owner, but is not binding on third persons, including a third party petitioner who requested the ex parte reexamination. As a result, ex parte reexamination is very popular with defendants in patent infringement litigation. An accused infringer can petition for ex parte reexamination and, with luck, have the patent thrown out completely or substantially limited during reexamination. If the patent survives reexamination, the accused infringer can raise exactly the same items of prior art and make exactly the same arguments beforethe court. For infringement defendants, ex parte reexamination has only up sides and no down sides.
C. Ex Parte Reexamination Process
The basic procedures of the current reexamination statute are as follows, from 35 U.S.C. §§ 301-307 and 37 CFR §§ 1501-1.565:
1. A person will request a reexamination. That person can be the patent holder, or it can be any third party, such as an accused infringer. The request must include the necessary fees, the prior art that was not previously considered, and an explanation as to why the prior art is pertinent to one or more claims of the patent.
2. Within three months, the commissioner will determine whether the new prior art presents a “substantial new question of patentability.” The consideration is limited to other patents and printed publications. It does not address questions of actual inventor, best mode, public use or sale prior to one year, or any of the other challenges to patentability. It only deals with prior art patents and printed publications.
3. If the commissioner decides that there is no “substantial question” of patentability, the matter is over and cannot be appealed. The patent holder presumably has the benefit of the presumption of validity in light of the new prior art in any subsequent court proceeding.
4. If the commissioner decides that there is a substantial question of patentability, the reexamination will proceed. The patent holder is given at least two months to present any arguments or amendments concerning the new prior art. If the reexamination results from a third party request, the PTO will give the third party at most two months to provide a reply to the arguments and amendments offered by the patent holder. At this point, the third party’s participation in the reexamination stops.
5. The reexamination will then proceed just as an initial examination, presumably with office actions, responses, and interviews with the examiner. A third party is not allowed to participate in the process. The third party also is not privy to any of the correspondence or conversations between the examiner and the patent owner.
6. If the patent holder is not satisfied with the results of the reexamination, the patent holder can appeal to the Board of Patent Appeals and Interferences. The patent holder can appeal the determination of the Board to the Court of Appeals for the Federal Circuit.
7. The third party that requested the reexamination has no right of appeal.
8. At the termination of all appeals, the commissioner will issue a “certificate” of the results of the reexamination. The certificate is the final determination effectively changing or affirming the patent.
D. The Japan Connection
The PTO states that the contents of the statute relating to reexamination were in large part based on the recommendations of an advisory commission contained in “The Advisory Commission on Patent law Reform: A Report to the Secretary or Commerce, August 1992.”
However, if you are a conspiracy theorist with a web site, you believe that the aegis of the changes is a series of agreements with Japan.
In 1994, the United States executive reached certain understandings with the government of Japan about changes in both of their patent offices. The agreements of interest were embodied in a letter dated August 16, 1994 and signed by Ron Brown, Secretary of Commerce. Concerning reexamination, Mr. Brown agreed:
(a) By august 1, 1994, in order to institute revised reexamination procedures by January 1, 1996, the USPTO is to introduce legislation to revise current reexamination procedures.
(b) The new reexamination procedures are to expand the grounds for requesting reexamination to include compliance with all aspects of 35 U.S.C. § 112 except for the best mode requirement.
(c) The new reexamination procedures are also to expand the opportunity of third parties to participate in any examiner interview and to submit written comments on the patent owner’s response to any action in the patent under reexamination.
In 1995, the PTO attempted to implement the agreements by statutory change and by regulation. The statutory change was not enacted into law, and the regulations were not adopted. Nonetheless, the PTO published proposed regulations at 60 Fed. Reg. 41035 (August 11, 1995) and accepted comment on the proposed regulations. The April 2000 preamble includes responses to the comments raised to the 1995 proposal.
By the way, if you are the Japanese Patent Office, and you have a web site, you don’t believe that the American Inventor’s Protection Act meets the letter or the spirit of your 1994 agreements with the U.S. executive.
Inter partes Reexamination
A. Nature and use of Inter Partes Reexamination
The American Inventors Protection Act of 1999, Public Law 106-113 included inter partes reexamination provisions in a new chapter 31 to U.S.C. Title 35, 35 U.S.C. §§ 311-318. The new reexamination procedures are in addition to the existing ex parte examination procedures, which are not changed.
The inter partes reexamination process apparently is intended to offer a low cost alternative to litigation to challenge the validity of a U.S. patent based on prior art. Note that the scope of inter partes reexamination is limited to prior art patents and publications, just as is ex parte reexamination. Inter partes reexamination is not popular with accused patent infringers because the results are binding to the accused infringer. Most accused infringers would rather try the issue of the validity of the patent before a court. Inter partes reexamination has not had the desired effect of reducing the burden on the courts and speeding infringement litigation.
Applicability of the new provisions is not simple. Under new 35 U.S.C. § 4608, the inter partes reexamination procedures will apply to any patent “…that issues from an original application filed in the United States on or after [November 29, 1999].” The term “original application” is undefined in the statute or rulemaking. There are questions concerning applicability to continuation or continuation in part applications. There also are other applicability provisions. For a detailed examination of applicability, see 65 Fed. Reg. 18155, column 1.
C. The Statute
To initiate inter partes reexamination, “any person at any time” may file a request. The request must be in writing, include the fee (of course), include the cited prior art and set forth the pertinency of the prior art to each challenged claim.
Within three months, the Director will determine whether to grant reexamination based on whether a “substantial new question of patentability” is presented. The Director’s determination is final and unappealable.
Once the Director determines that reexamination will proceed, the reexamination proceeds as in an initial examination, with a few changes. The principal change is that each time the patent owner files a response to a PTO action on the merits, such as an office action, the third party is entitled to file a response within thirty days.
At the conclusion of the reexamination, the patent owner or the third party may appeal the results to the Board of Patent Appeals and Interferences. The third party’s appeal rights stop with the Board. The patent owner can appeal to the Court of Appeals for the Federal Circuit.
The initiation of an inter partes reexamination has several substantial effects.
a. First, other litigation is stayed on request of the patent owner (but not the third party) unless the court determines that justice will not be served. This evinces a bias toward resolving issues of prior art patentability in the PTO, not in the courts.
b. Second, the third party requester is estopped from asserting invalidity of the patent in any civil action based on the prior art considered in the reexamination. The effect is greater than the presumption of validity. The third party cannot even raise the issue.
c. Third, the patent owner, third party and their privies are prohibited from requested further reexaminations during the period that an inter partes reexamination is proceeding. This serves to prevent a third party from abusing the patent owner by showering the patent owner with separate requests for inter partes reexamination.
d. Fourth, a third party is prohibited from requesting a new inter partes reexamination based on any matter which the party could have raised in the initial proceeding. This introduces the concept of claim preclusion to the reexamination process.
e. Fifth, a party requesting reexamination is estopped from challenging any fact determined during the reexamination. This introduces the concept of issue preclusion into the reexamination process. There are real issues of fairness here. The determination of the Director, which is reviewed only by the Board, is treated as having the preclusive effect of a final court decision. The determinations have preclusive effect even though the third party is not allowed to appeal that decision through the courts. This probably is a violation of due process.
D. Draft Regulations
The PTO published draft regulations implementing the inter partes proceedings on April 6, 2000 at 65 Fed. Reg. 18154. The draft regulations will be codified at 37 CFR §§ 1.902-1.995 and at several scattered locations. The draft regulations fill in many of the blanks left by the statute. For example:
1. In deciding how to fairly accommodate the patent owner and third party in examiner interviews, the PTO decided that the competing interests could not be accommodated. The PTO split the baby, and prohibited all examiner interviews in inter partes reexaminations. Telephone calls to the examiner on the merits presumably also are prohibited.
2. The fee for an inter partes reexamination will be $8,800.00, which is estimated to cover the actual costs of the examination.
3. If reexamination is not granted, the PTO will refund all but $830.00.
4. The PTO generally will not assign the same examiner who made the original decision to the case, but may to so in some instances.
5. As a matter of policy, PTO probably will conduct a panel review of inter partes reexamination decisions to improve quality control.
6. As a matter of policy, PTO is considering creating a special group for inter partes reexamination to oversee reexaminations.
7. As a matter of policy, PTO will require the examiner to build a record of reasons for decisions.
8. The examiner will be authorized to conduct additional searches as a part of an inter partes proceeding.
9. An ex parte requester also may request inter partes examination. The prohibition on multiple inter partes examinations does not apply in that situation.
10. Multiple reexamination requests may be merged into a single proceeding. Reexamination and reissue applications may be merged in a single proceeding.
11. The statute contemplates that the request can be made either by a third party or by the patent owner. A patent owner may wish to file for inter partes reexamination to gain the advantage of the preclusions and estoppels resulting from the reexamination as discussed above. The draft regulations do not allow the patent owner to request inter partes reexamination.
12. Not only does a reexamination act as an estoppel in a civil action, but civil actions act as estoppel in reexamination proceedings. This prevents the third party challenger from taking two bites of the apple.
13. If an examiner decides not to grant reexamination based on no showing of “substantial new questions of patentability of any claim,” then the third party may petition to the Director for reconsideration of the decision. If the Director affirms the examiners’ decision, then no appeal is allowed.
14. The PTO usually will accompany the decision to grant inter partes reexamination with the first Office Action on the reexamination.
15. The third party is allowed to comment on the response of the patent owner to each office action on the merits. The third party may comment only on the office action or the patent owner’s response. Where multiple requests for reexamination are consolidated, the third party does not appear to be limited to the issues raised by that third party, but may comment on all issues raised by all third parties.
16. The third party is limited in the prior art that it is allowed to cite. It can cite prior art to rebut a finding by the examiner, which is necessary to rebut the patent owner’s response, or “which became known after the filing of the request” for reexamination. This last portion is to prevent sandbagging by the third party.
17. Time limits applicable to the patent owner may be extended upon request filed before the deadline. Time limits applicable to the third party will not be extended.
18. Oral argument is allowed in the appeal to the Board upon request by a party