The Case for Reexamination  

August 2016

By: Regina McCarthy 

Reexamination is one of several options for challenging the validity of an issued patent. While other administrative options, such as inter partes review (IPR) and covered business method patent review (CBM), are conducted in a trial format, reexamination is a much simpler process. A party can submit prior art consisting of patents or printed publications to the Patent Office along with a request to re-open examination of the patent based on the prior art. Below are ten points to consider in determining when a reexamination may be the right option for challenging an issued patent.

Reexamination is (relatively) inexpensive

Reexamination is generally a lower-cost option compared to challenging a patent through an inter partes review. Typically, the requester does not participate in the reexamination proceedings, once the initial request is filed, in contrast to IPR or CBM reviews, which include discovery and a final, trial-like hearing. Legal fees for a reexamination request normally include only the filing fee and the cost to prepare the initial request for reexamination.

The standard for grant is low

The Patent Office’s standard for granting a reexamination request is also lower than the standards used for IPR or CMB. A requester need only demonstrate to the Patent Office that a “substantial new question of patentability” exists based on the prior art for a reexamination request to be granted. IPR and CMB, on the other hand, require a showing that there is a “reasonable likelihood” that at least one of the challenged claims is unpatentable, which is a higher bar for the petitioner to meet.

Previously cited art may be relied upon

While reexamination requires a “substantial new question of patentability”, there is no requirement that the prior art relied upon must be newly cited. Instead, a requester may rely on prior art previously considered by the Examiner, as long as the request for reexamination establishes a substantial new question of patentability. In addition, a reexamination proceeding may invalidate a patent, even when a federal court has previously held the patent to be valid over the same prior art.

There is no standing requirement

A party does not have to show that it has suffered any harm and/or been threatened by the patent owner to request reexamination. In fact, because there is no standing requirement, the requester may remain anonymous throughout the proceedings. In addition, there is no jurisdictional requirement – the requester and patentee may be located anywhere.

No legal estoppel is created

A requester is not required to submit all known prior art, allowing the requester to reserve prior art, should the matter later appear in federal court. In addition, the requester may request a second reexamination relying on the reserved prior art if the outcome of the first reexamination is undesirable. In contrast, once a final decision has been issued in an IPR, the challenger is prevented from challenging the patent claim’s validity in federal court, through a second IPR, or in any other administrative procedure based on any ground that the petitioner raised or reasonably could have raised during the IPR.

Parallel litigation may be stayed

Requests for reexamination may be filed when the patent is involved in concurrent litigation. The institution of a reexamination may be the basis for seeking a stay of the litigation, allowing the requester time and leverage to build or settle a case. However, a litigation stay is not mandatory, and the reexamination proceeding will be expedited by the Patent Office in the event that any co-pending litigation is stayed.

Reexamination is (relatively) quick

The average pendency of a reexamination is typically shorter than the pendency of an IPR proceeding.  When time is of the essence, reexamination may be an attractive alternative to IPR or litigation. For example, a requester wishing to practice the patent at issue may seek to have the patent quickly invalidated through reexamination.

Discounted fees are available

Reexamination filing fees are discounted if the requester is eligible to claim small or micro entity status. The reexamination request fee for a small entity is half of the regular filing fee and the micro entity fee is only a quarter of the regular fee. In contrast, the fees associated with IPR proceedings are not tiered and micro entities pay the same fee as large entities.

Admissions against interest can be used against the patent owner

An admission against interest by the patent holder may be used in a reexamination proceeding. Admissions against interest may be found in the file history of the patent application, other patents or file histories, or prior court proceedings. Once a substantial new question of patentability has been established, an admission against interest in combination with a patent or printed publication may be used to reject a claim in a reexamination proceeding.

The claims cannot be broadened

Claims may be amended in a reexamination proceeding, but the amendments cannot be of a broadening nature. In fact, claims that are broadened during reexamination may be invalidated on this basis in a subsequent court proceeding. As such, reexaminations can serve to either invalidate or reduce the scope of any claims identified in the reexamination request.