Reexamination

[ree-ig-zam-in]

In United States patent law, a reexamination is a process whereby a third party or inventor can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable. In order to have a patent reexamined, the party of interest must submit prior art that raises a "substantial new question of patentability".

Process

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 BlackBerry™ 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.

Public notice

The proceedings of all reexaminations are made available to the public on the USPTO’s public PAIR (Patent Application Information Retrieval) web site.

The process of reexamination has the potential to increase the quality of patents issued and to encourage public input in the process.

Ex parte and inter partes reexaminations

Ex parte reexaminations are initiated by members of the public, but once said members submit their request, they no longer actively participate in the proceedings. The correspondence is strictly between the examiner and the patent owner.

Inter partes reexaminations are initiated by member of the public, but said members of the public continue to participate in the proceedings.

Certain Inter partes reexaminations are prohibited under 35 U.S.C. § 317.

Statistics

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.

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.

Notable reexaminations

NTP patents

The NTP, Inc. patents covering BlackBerry technology are currently undergoing a number of reexaminations because new prior art has been discovered which hadn’t been considered by the patent office when the patent applications were first examined. Some of these reexaminations are inter partes, some of them are ex parte, some of them are director initiated. Some of the patents have had multiple reexaminations filed. These multiple reexaminations have been merged into single reexaminations, each for the patent in question.

As of April 2006, all of the NTP claims that have been acted upon have been rejected because of the substantial new questions of patentability that have been raised. Whether or not NTP can narrow their claims to get around the rejections, or succeed in an appeal of the rejections, remains to be seen.

Method for Swinging on a Swing

entitled "Method of Swinging on a Swing" was issued in 2002 to applicant Steven Olsen. This patent was filed shortly after business method patents became allowable in US patent law due to the 1998 State Street Bank decision. It appears to have been filed as a test of what could get through the patent office under the new guidelines.

The inventor claimed to have invented an improved method for a child to swing on a swing.

This patent was widely ridiculed and the director ordered a reexamination. During the reexamination, the claims were rejected. The patent owner elected not to appeal. A reexamination certificate was issued cancelling all of the claims.

Crustless Peanut Butter and Jelly Sandwich

entitled "Sealed crustless sandwich" was issued in 1999 to applicants Len Kretchman and David Gesked. This patent disclosed and claimed an improved crustless peanut butter and jelly sandwich that could be mass produced and sold in stores.

This patent has been widely ridiculed in the media as an example of an obvious invention that never should have been granted a patent.

The patent was licensed to Smuckers who then introduced the Uncrustables brand of frozen no-crust sandwiches. Smuckers invested close to $20 million to start up a factory in Scottsville, Kentucky to produce the product. Their annual sales in 2005 were $US 60 million.

In order to enforce the patent, Smuckers filed a patent infringement lawsuit against alleged infringer Albie’s Foods, Inc. Albie’s Foods responded in part by filing a request for ex parte reexamination.

The claims of the patent were rejected by the examiner and the rejection had been appealed to the Board of Patent Appeals and Interferences (BPAI). The BPAI has also rejected the claims and the USPTO has issued a notice that it intends to cancel all of the claims.