JUrISdIctIOn repOrt: US
AVOIdInG pAtent LItIGAtIOn
VIA re-exAmInAtIOnS
paul J. Sutton Sejal parikh
Sutton Magidoff
The US Patent and Trademark Office (PTO) sometimes grants overly broad
Advantages over litigation
patents (problem patents) where the PTO examiner is unaware of relevant
prior art. Re-examination proceedings are designed to correct these decisions. During these challenging economic times, with ever-increasing costs
This article examines the pros and cons of re-examination as an alternative
associated with patent litigation, parties are looking for alternatives to
to litigation.
pursuing the district court litigation path to achieve desired results. Inter
parties re-examination has a number of advantages that make it worth
Where a party becomes aware of a problem patent, it is entitled to request
considering.
re-examination proceedings, whether it has received an infringement threat
itself or not. This enables it to promptly assume an offensive posture without
Its advantages include: the costs of re-examination proceedings are normally
engaging in any allegedly or potentially infringing commercial activity.
a fraction of those associated with litigation; patents are not presumed to be
Furthermore, third-party requestors have the right to appeal adverse PTO
valid; claims are allowed their broadest reasonable construction consistent with
decisions to the Federal Circuit, putting them on a more equal footing with
the written description; the evidentiary burden of proof is a “preponderance
patent owners.
of the evidence” as opposed to the more difficult “clear and convincing
evidence” burden; there is direct involvement with technically trained PTO
ex parte versus inter parties
decision-makers; claim amendments provide possible intervening rights;
there is a far quicker determination of the effects of prior art; and new patent
Re-examination can take two forms: ex parte or inter parties. Congress owner arguments may introduce new prosecution history estoppel, forcing
established ex parties re-examination through the Patent Act of 1980. The inter
the owner to choose among limiting claim interpretations.
parties procedure was established by the American Inventor’s Protection Act of
1999 for patents based upon applications filed after November 29, 1999. disadvantages
Once initiated, during ex parte proceedings, the only party participating with the The inter parties procedure also has drawbacks, however. The average
PTO is the patent owner. During an inter parties proceeding, on the other hand, re-examination pendency may be between three and four years.
a third-party requestor is permitted to participate throughout the process.
In addition to this, the third-party requestor will be estopped in later
Any party may request a re-examination, but the PTO will only initiate litigation from asserting invalidity on any ground raised or that could
proceedings if it believes that a substantial new question of patentability exists have been raised in the inter parties re-examination; cannot raise the
that casts doubt upon the validity of issued patent claims. A patent owner adequacy of the patent specification, the “best mode” requirement,
should use the process to either affirm a patent claim or scale back its scope to
or statutory bars arising from prior public use or commercialisation;
avoid going through a trial only to have the claim invalidated.
is limited to presenting documentary evidence; and cannot use subpoenas,
interrogatories, depositions, live testimony or cross-examination of
A potential infringement target may initiate re-examination proceedings in
witnesses.
order to have the PTO withdraw or limit the scope of problem patent claims.
The director of the PTO has been known to initiate the process to quell a public
Furthermore, a re-examination that does not invalidate or significantly
outcry over overly broad patent claims.
narrow patent claims can leave the patent stronger than before.
requestor rights
conclusion
A third-party requestor has the right to comment on PTO official actions and
Given these difficult economic times, re-examination and its effectiveness
is also permitted to be involved all the way to and through an appeal process.
and lower costs should always be considered as an option when developing
This includes the right to file appeals to the Board of Patent Appeals and
a patent strategy.
Interferences, and to the US Court of Appeals for the Federal Circuit.
In exchange for these participatory rights, however, the requestor will be
Paul J. Sutton is a founding partner of Sutton Magidoff. He can be contacted
estopped from challenging the validity of the patent in related court litigation,
at: paul@suttonmagidoff.com
based upon any ground raised or that could have been raised, during the
re-examination proceeding. Sejal Parikh can be contacted at: sejal_parikh@hotmail.com
76 World Intellectual property review September/October 2009 www.worldipreview.com
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