Reexamination of a granted patent is usually undertaken by a patent holder to strengthen his/her patent, to be able to beat an invalidity threat by a third party or by a third party. Whatever may be the reason, this process allows for increasing the quality of the enforceable patents present wholly. It eliminates the weak patents and gives the patent document the due authenticity it deserves. Since you are dealing with an experienced examiner who is well versed in the art unit, and given that the claims are given the broadest reasonable interpretation, and the standards of evidence are the preponderance of evidence as against the clear and convincing evidence which a court would employ. It seems to have an edge in its own way as compared to litigation.
The reexamination process is very similar to the regular patent prosecution.. The reexamination request is taken up only if a substantial new question of patentability has been presented by the requesting party. The reexamination party may be brought about by a patentee, a third party or the PTO director himself. In the first two cases, it is an Ex parte re-Examination as against the request being brought about by the PTO director, in which case it would become Inter Partes Reexamination. In an Interpartes Re-Examination, the patent holder is given an opportunity to file a statement regarding the new question of patentability and also provide an opinion on the amended claims or the new claims. The request for a Reexamination goes to the Central RE examination Unit (CRU). The CRU decides on whether a request is to be granted, and if they do, a reexamination is ordered within 3 months from the date of filing the requests. The grant rate for the request has been at an average of approximately 90%. Which is a pretty good assurance of the request being granted in case a substantial and new question has been raised by the requester.
Requirements for Filing
The requirements for filing the Reexamination requests are:-
- Must be based on printed publication prior art
- Must raise a question of patentability with respect to the novelty and/or non-obviousness
- There should be a substantial new question of patentability. This substantial new question can also be raised with respect to old prior art cited during the original examination but in the new light. The art is to be considered or presented in new light compared to its earlier use by the Patent Office.
- The request must apply the prior art printed publication(s) to the claims. A pertinent point here is to know that the cited documents can either be printed publications, patents, and statements made by the patent holder in another proceeding before the Federal Court or the PTO related to claim construction.
Issues like enablement, written description or indefiniteness, public use and the like need not be mentioned. If you are a third party requester, then this initial document which is being submitted for the reexamination may very likely be the only document filed. The most common problems that crop up with the requests and those needs to be avoided are
There is a Failure to point out and explain the substantial new question(SNQ) apart from reading the claims on the art
- Including non-applied art
- Reference to prohibited issues (e.g., inequitable conduct, ineligible subject matter, failure to comply with § 112)
- Ambiguous statements of SNQ or rejection (containing the word “or”).
The requirements for the request are:-
- Copy of patent (plus all subsequent history)
- Copy of prior art printed publication(s) relied upon
- Identification of each claim to be reexamined
- Identification of each SNQ
- A detailed explanation of pertinence and manner of applying the prior art to the claims.
- Certification filing not prohibited by AIA’s new estoppel provisions
We can support you with the preparation of the detailed explanation of pertinence and manner of applying the prior art to the claims. Additionally, optional items which may be accompanied by the requests include claims charts, declarations to explain the content of the prior art, patent owner requests may also have patentability arguments. We at OutsourceIP, are well equipped to support you in all of the above-mentioned aspects.