Patent Hawk - Reexamination

Anytime during the life of a patent, anyone can request that a patent be reexamined, ostensibly to verify that the patent claims are valid. An interested party initiates a reexam by filing a reexamination request with the USPTO, where the request raises a "substantial new question of patentability" (SNQ). The "new question" is prior art that had not previously been considered during examination, or had been misunderstood or mischaracterized during a previous examination.

Sometimes an inventor, or a patent holder, files for reexam, to get past prior art that may vex the patent if it were enforced in litigation, or to bolster its value for eventual sale. But typically, the reexam requestor wants to kill the patent.

97% of reexamination requests are granted. The patent office needs the dues. About a third of patents reexamined are confirmed valid. Around 10% of reexamined patents have all claims under the gun bite dust. About half the time, at least one claim is amended during reexamination.

Claims cannot be broadened during reexamination, only narrowed by amendment.

There are two types of reexamination: ex parte and inter partes. In ex parte, a reexam request is filed; the requestor may reply to the owner's answer to a reexam being granted, but otherwise has no further input. Inter parte reexams allow the requestor to kibitz during reexamination, all the way to appeal to the CAFC. Inter parte requests are possible only for patents filed on or after November 29, 1999. Inter parte requests are more expensive than ex parte.

Years ago, the common approach for a defendant in a patent suit was to argue validity before the Court, then file for a reexam if the patent was found "not invalid." Basically, reexam was used as spite, and a belated attempt to limit future damages.

It has become more common to file for a reexam early in litigation, then ask the court for a stay pending the outcome of the reexam.

The reexam-stay stratagem has a better chance of succeeding, in getting a stay, the earlier in litigation that the request is filed. In other words, the best way to sideline a litigation is to get cracking on a reexam as soon as a controversy arises. Judges don't like to stay a case once proceedings are well underway. It's unusual for a court to stay a case after the claim construction process gets going.

There's no denying that Patent Hawk is a patent killer. It's fair to say that the Hawk has put the hurt on more patents in the past decade than anyone else could boast.

Patent Hawk can fully prepare a reexam, from finding invalidating prior art to putting the last nail in the coffin of a reexam request. Patent Hawk can also dog the patent holder in an inter partes reexam.

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	this page: About Reexamination Defense Stratagem Patent Hawk Reexam email: info@ patenthawk.com Phone: 503.922.2433 (Portland)206.529.5146 (Seattle) *The Patent Prospector* (patent weblog)	About Reexamination Anytime during the life of a patent, anyone can request that a patent be reexamined, ostensibly to verify that the patent claims are valid. An interested party initiates a reexam by filing a reexamination request with the USPTO, where the request raises a "substantial new question of patentability" (SNQ). The "new question" is prior art that had not previously been considered during examination, or had been misunderstood or mischaracterized during a previous examination. Sometimes an inventor, or a patent holder, files for reexam, to get past prior art that may vex the patent if it were enforced in litigation, or to bolster its value for eventual sale. But typically, the reexam requestor wants to kill the patent. 97% of reexamination requests are granted. The patent office needs the dues. About a third of patents reexamined are confirmed valid. Around 10% of reexamined patents have all claims under the gun bite dust. About half the time, at least one claim is amended during reexamination. Claims cannot be broadened during reexamination, only narrowed by amendment. There are two types of reexamination: ex parte and inter partes. In ex parte, a reexam request is filed; the requestor may reply to the owner's answer to a reexam being granted, but otherwise has no further input. Inter parte reexams allow the requestor to kibitz during reexamination, all the way to appeal to the CAFC. Inter parte requests are possible only for patents filed on or after November 29, 1999. Inter parte requests are more expensive than ex parte. Defense Stratagem Years ago, the common approach for a defendant in a patent suit was to argue validity before the Court, then file for a reexam if the patent was found "not invalid." Basically, reexam was used as spite, and a belated attempt to limit future damages. It has become more common to file for a reexam early in litigation, then ask the court for a stay pending the outcome of the reexam. The reexam-stay stratagem has a better chance of succeeding, in getting a stay, the earlier in litigation that the request is filed. In other words, the best way to sideline a litigation is to get cracking on a reexam as soon as a controversy arises. Judges don't like to stay a case once proceedings are well underway. It's unusual for a court to stay a case after the claim construction process gets going. Patent Hawk Reexam There's no denying that Patent Hawk is a patent killer. It's fair to say that the Hawk has put the hurt on more patents in the past decade than anyone else could boast. Patent Hawk can fully prepare a reexam, from finding invalidating prior art to putting the last nail in the coffin of a reexam request. Patent Hawk can also dog the patent holder in an inter partes reexam.
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