Reexamination of Issued Patents

After a patent has been issued, any person, including the patentee, may request reexamination of the patent by the Patent and Trademark Office in order to verify its validity. In addition, reexamination can be ordered by the Patent Office itself. Reexamination can be a valuable procedure when one wants to test the validity of a patent prior to bringing an action for infringement, or before taking some action (e.g., commencing use of a similar process or machine) which might precipitate an infringement action by the patentee. However, post-grant review has often proven to be quite complex and controversial and a number of attempts have previously been made to make the process more efficient, including multiple efforts to reform the reexamination process which often proved to be quite costly and time-consuming given that the initial decision of patent examiners was almost invariably appealed to the Patent Board.

Recognizing these problems, the America Invents Act, which came into effect in September of 2011, amended ex parte and inter partes reexamination.  Under the amended ex parte reexamination procedures, the Director is allowed to institute a reexamination on the Director’s own initiative if a substantial new question of patentability is raised by patents or publications.  The America Invents Act also converts inter partes reexamination from an examinational to an adjudicative proceeding and renamed the proceeding “inter partes review.”  The Act raised the standard a petitioner must meet before the Director institutes inter partes review.  Specifically, the petitioner must show “that there is reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged.” The Director’s refusal to institute a review is unappealable.  A petition may attack a patent only on the basis of a defect under 35 U.S.C.A. §§ 102 and 103; the defect must be supported by “prior art consisting of patents or printed publications.” 35 U.S.C.A. § 311.  The U.S. Supreme Court considered the inter partes review procedure in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131, 119 U.S.P.Q.2d 1065 (2016) and supported the right of Patent Office to set legal standards for use in constructing patents within review proceedings.

The America Invents Act also created a new post-grant opposition procedure that can be utilized during the first nine months after the grant of a patent or issue of a reissue patent. Unlike reexamination proceedings, which provide only a limited basis on which to consider whether a patent should have issued, the post-grant review proceeding permits a challenge on any ground related to invalidity under section 282 of Title 35; however, the petition must include detailed explanation and support and the petition must be made available to the public promptly after filing.  The patent-holder has the right to file a preliminary response stating why a reexamination proceeding is unwarranted. The Director may only institute a reexamination proceeding if one of two standards is met. First, the information in the petition (if not rebutted) “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Second, “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” 35 U.S.C.A. § 324. The Director’s decision not to institute such a proceeding is not appealable.  The intent of the post-grant review process is to enable early challenges to patents, while still protecting the rights of inventors and patent owners against new patent challenges unbounded in time and scope. In utilizing the post-grant review process, petitioners, real parties in interest, and their privies are precluded from improperly mounting multiple challenges to a patent, or initiating challenges after filing a civil action challenging the validity a claim in the patent. Further, a final decision in a post-grant review process will prevent the petitioner, a real party in interest, or its privy from challenging any patent claim on a ground that was raised in the post-grant review process. The post-grant review procedure is not intended, however, to inhibit patent owners from pursuing the various avenues of enforcement of their rights under a patent, and the amendment makes clear that the filing or institution of a post-grant review proceeding does not limit a patent owner from commencing such actions. Given the short time period available for initiating post-grant opposition procedures, it is incumbent for companies to carefully monitor the patent activities of competitors and the record of patent grants.

The America Invents Act also made several other anticipated improvements to “inter parties” review. For example, prior to the enactment of the America Invents Act, if the new references were found to be more relevant than the references previously cited by the examiner and presented “a significant new question of patentability,” a reexamination proceeding was conducted in the Patent Office similar to the original examination. However, the America Invents Act raised the threshold for initiating such a review from “a substantial new question of patentability” to “a reasonable likelihood that the requestor would prevail” with respect to at least one of the challenged claims.

During the reexamination proceeding, the patent owner has the right to file a statement arguing the new question of patentability and to amend the claims to further distinguish them from the new references. The reexamination procedure enables a patent infringer or any other interested party to contest the validity of a patent without litigation. Within the request for reexamination the infringer or other third party may present arguments of why the claims of the patent are invalid or unpatentable over the new references and may reply to the patent owner’s statement. However, after the reexamination proceeding begins, the third party cannot participate further, such as by responding to amendments or attending interviews with the examiner. However, the third party is sent copies of all office actions and amendments.

The America Invents Act expanded the category of documents that may be cited in a reexamination proceeding to include written statements of the patent owner that have been filed in a proceeding before a federal court or the Patent Office regarding the scope of claims. This addition counteracts the ability of patent owners to offer differing interpretations of prior art in different proceedings. These written statements, which include documents, pleadings or evidence from proceedings that address the patent owner’s statements, cannot be considered for any purpose other than to determine the proper meaning of the claims that are the subject of the request in a proceeding.

The America Invents Act included provisions estopping a party from raising, in a subsequent Patent Office proceeding, any issue that it raised or reasonably could have raised in the inter partes review. In addition, the America Invents Act imposed on petitioners the burden of proving that a patent is invalid by a preponderance of the evidence in inter partes review and also imposed time limits on litigation and permits limited discovery. Under the America Invents Act, inter partes review must be completed within one year of when the proceeding is instituted, except that the Patent Office can extend this deadline by six months for good cause. The results of any reexamination will be set out by the Patent Office in a certificate, which describes the new content of the patent.  For further discussion, see Patents (§§196.1 et seq.) in Business Transactions Solution on WESTLAW.

Written by agutterman

Founding Director of the Sustainable Entrepreneurship Project

Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out /  Change )

Google+ photo

You are commenting using your Google+ account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s