© 2003, Dawsey Co., LPA
February 2003

Patent reexamination is an often misunderstood term. Reexamination is frequently viewed as a way to invalidate a competitor’s patent(s). While this may be true to some extent, reexamination is not easy or inexpensive, and is often used by a patent holder to strengthen and increase the value of their own patent.

Reexamination is a procedure by which the Patent Office may reconsider the patentability of the claims of an issued patent. Reexamination comes in two forms, ex parte reexamination and inter partes reexamination.

Prior to getting into the intricacies of the ex parte and inter partes reexamination, one must understand the two basic stages of either reexamination process. The two-stage reexamination process was created to ensure that system would not foster harassment of patent holders.

The first stage of the process simply determines whether a request for reexamination rises to the level required for reexamination. This requires that the prior art patents and printed publications submitted with the request raise a “substantial new question of patentability.” The “substantial new question of patentability” protects patentees from having to participate in unjustified reexaminations. If the requirements of stage one are met, then the second stage begins wherein actual reexamination takes place to determine if the claims are patentable.

A patent owner or an interested third party may request ex parte reexamination. Ex parte reexamination is unique in that once the Patent Office determines that the requirements of stage one have been met and actual reexamination, stage two, starts, the interested third party is not permitted to file additional papers on the action. Therefore, a third party requester has a very limited opportunity to convince the Patent Office that certain claims should be found invalid, while the patent holder has the entire reexamination process to convince the Patent Office that the claims should be found valid.

Inter partes reexamination allows the interested third party to participate in both stage one and stage two of the reexamination process. Therefore, the third party has a greater opportunity to convince the Patent Office that the claims are invalid by filing one response following each patent owner’s response to each office action.

It is important to note that the additional benefits of inter partes reexamination come at a price. First, the inter party inter partes reexamination requester cannot challenge the validity of any claim that survives the reexamination. Secondly, the current filing fee for inter partes reexamination, $8,800, is roughly 3.5 times the filing fee for ex parte reexamination, $2,520.

Reexamination is an important offensive and defensive tool that should be discussed with your patent attorney.