A request for a reexamination can be filed by anyone at anytime during the period of enforceability of a patent. In order to request a reexamination, one needs to submit a “request for reexamination”, pay a fee, and provide an explanation of the new reasons why the patent is invalid. These reasons must be based on prior art. Copies of the prior art must be provided and the requester has to let the patent owner know that a request has been filed. The USPTO will then review the request. If the request does raise a sub...
A request for a reexamination can be filed by anyone at anytime during the period of enforceability of a patent. In order to request a reexamination, one needs to submit a “request for reexamination”, pay a fee, and provide an explanation of the new reasons why the patent is invalid. These reasons must be based on prior art. Copies of the prior art must be provided and the requester has to let the patent owner know that a request has been filed. The USPTO will then review the request. If the request does raise a substantial new question of patentability, the USPTO will order a reexamination.
Most requests for reexamination are filed by third parties. A substantial fraction of these parties are already involved in a patent infringement lawsuit. By filing a reexam, they can hopefully invalidate the patent while at the same time keeping their legal fees low. If the judge in the lawsuit agrees, then the trial proceedings may be delayed pending the outcome of the reexamination.
Many requests for reexamination are filed by inventors themselves. They might do this before they sue someone for infringing their patent to make sure that their claims are valid in light of any prior art they may have discovered since the patent issued.
A small number of reexaminations are initiated by the patent office itself. These are called “director initiated” reexaminations. They might be filed when a patent of questionable validity attains a lot of publicity. The director, for example, ordered several of the reexaminations of the NTP, Inc. patents that covered BlackBerrytm mobile email technology.
Once a reexamination is ordered, a new examiner is assigned to the case and the patent goes through another examination similar in procedure to the examination it received the first time around. If any claims are rejected in light of the new questions raised, then the patent owner can narrow or cancel said claims to get around the rejection. The patent owner can also submit new claims, provided they are not any broader than the claims in the original patent. If the examiner makes a rejection "final", then the patent owner can appeal the examiner’s decision to the USPTO's Board of Patent Appeals and Interferences. If necessary, the patent owner can further appeal to the Court of Appeals for the Federal Circuit, and even to the US Supreme Court if necessary.
Once the reexamination has been concluded, a “Certificate of Reexamination” is issued. The certificate makes any corrections to a patent that are required by the reexamination. If all of the claims are rejected, for example, then the certificate will indicate that all claims are cancelled and the patent owner will be left with a patent that doesn’t cover anything.
Roughly 500 ex parte reexaminations are filed per year. This corresponds to about 0.33% of the number of patents issued in a given year. About 60 inter partes reexaminations are filed per year.[4]
About 64% of patents in ex parte challenges survive with some of their claims intact. In 26% of the cases all claims are confirmed. In other words, in only 10% of the cases is a patent completely invalidated in an ex parte challenge
