Reexamination
Encyclopedia
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. To have a patent reexamined, an interested party must submit prior art
that raises a "substantial new question of patentability
".
Requests for reexamination are often filed by third parties, who are already involved in an infringement lawsuit concerning the patent at issue. By filing for a reexamination, such parties seek to invalidate the patent while keeping legal fees low. If the judge agrees, the trial proceedings may be put on hold pending the outcome of the reexamination.
Inventors themselves also file requests for reexamination. Such requests may be filed before the inventors sue another party for infringing the patent, to make sure that the patent is valid in light of any prior art they may have discovered since the issuance of the patent.
The patent office itself may initiate “director initiated” reexaminations, for example, when there is reason to question the validity of the patent. The director, for example, ordered reexaminations of the NTP, Inc. patents which covered BlackBerry
mobile e-mail technology.
Once a reexamination is ordered, a new examiner is assigned to the case, and the patent goes through another examination similar 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 the said claims. The patent owner can also submit new claims, provided they are not broader than the claims in the original patent. If the examiner makes a rejection "final", the patent owner can appeal the decision to the Board of Patent Appeals and Interferences
(BPAI) at the USPTO. The patent owner can file an appeal to the Court of Appeals for the Federal Circuit and even to the US Supreme Court, if permitted.
Once the reexamination has been concluded, a “certificate of reexamination” is issued. The certificate makes any corrections to a patent as are required under the reexamination. If all the claims in the patent are rejected, the patent gets nullified.
The process of reexamination has the potential to increase the quality of patents issued and to encourage public input in the process.
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. The fee for filing a request for an ex parte reexamination is $2520.
Inter partes
reexaminations are initiated by member of the public, but said members of the public continue to participate in the proceedings. The fee for filing a request for an inter partes reexamination is $8800.
Duplicate requests for Inter partes reexaminations by the same requesting party are prohibited under 35 U.S.C. § 317.
Statistics released by the USPTO for reexaminations in 2007 showed that for ex parte reexaminations, claims were changed in 64% of the cases. In 26% of the cases, all claims are confirmed with no changes, while in 10% of the cases, all claims were invalidated. For inter partes reexaminations, claims were changed in seven of the eight cases that had been completed by the time the statistics were released.
technology are currently undergoing a number of reexaminations because new prior art has been discovered which had not 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 initiated by the director. Some of the patents have had a number of 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 on the basis of the substantial new questions of patentability. It is yet to be determined whether NTP would narrow its claims to get around the rejections, or succeed in an appeal.
s became allowable under the US patent law due to the 1998 State Street decision. The patent claimed an improved method for a child to swing on a swing.
The PTO director ordered a reexamination, and the claims were subsequently rejected. The patent owner elected not to appeal. A reexamination certificate was issued canceling all the claims.
" was issued in 1999 to applicants Len Kretchman and David Gesked. The patent claimed an improved crustless peanut butter and jelly sandwich, which could be mass produced and sold in stores.
This patent has been widely ridiculed in the media as an example of an obvious invention, which should never have been granted a patent.
The patent was licensed to Smuckers
, which then introduced the Uncrustables brand of frozen no-crust sandwiches. Smuckers invested about $20 million to build a factory in Scottsville
, Kentucky
to produce the product. Its annual sales in 2005 were $US 60 million.
To enforce the patent, Smuckers filed a patent infringement
lawsuit against alleged infringer, Albie’s Foods. Albie’s Foods responded by filing a request for ex parte reexamination.
The examiner rejected the claims in the patent, and the rejection had been appealed to the BPAI. The BPAI rejected the claims, and the USPTO issued a notice that it intends to cancel all of the claims.
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, a reexamination is a process whereby a third party or inventor can have a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
reexamined by a patent examiner to verify that the subject matter it claims is patentable. To have a patent reexamined, an interested party must submit prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
that raises a "substantial new question of patentability
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
".
Process
A request for a reexamination can be filed by anyone at anytime during the period of enforceability of a patent. To request a reexamination, one must submit a “request for reexamination,” pay a substantial fee, and provide an explanation of the new reasons why the patent is invalid based on prior art. Copies of the prior art must be provided, and the party making the request has to let the owner of the patent know that a request has been filed. If the USPTO finds that the request does raise a substantial new question of patentability, the USPTO orders a reexamination.Requests for reexamination are often filed by third parties, who are already involved in an infringement lawsuit concerning the patent at issue. By filing for a reexamination, such parties seek to invalidate the patent while keeping legal fees low. If the judge agrees, the trial proceedings may be put on hold pending the outcome of the reexamination.
Inventors themselves also file requests for reexamination. Such requests may be filed before the inventors sue another party for infringing the patent, to make sure that the patent is valid in light of any prior art they may have discovered since the issuance of the patent.
The patent office itself may initiate “director initiated” reexaminations, for example, when there is reason to question the validity of the patent. The director, for example, ordered reexaminations of the NTP, Inc. patents which covered BlackBerry
BlackBerry
BlackBerry is a line of mobile email and smartphone devices developed and designed by Canadian company Research In Motion since 1999.BlackBerry devices are smartphones, designed to function as personal digital assistants, portable media players, internet browsers, gaming devices, and much more...
mobile e-mail technology.
Once a reexamination is ordered, a new examiner is assigned to the case, and the patent goes through another examination similar to the examination it received the first time around. If any claims
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
are rejected in light of the new questions raised, then the patent owner can narrow or cancel the said claims. The patent owner can also submit new claims, provided they are not broader than the claims in the original patent. If the examiner makes a rejection "final", the patent owner can appeal the decision to the Board of Patent Appeals and Interferences
Board of Patent Appeals and Interferences
The Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
(BPAI) at the USPTO. The patent owner can file an appeal to the Court of Appeals for the Federal Circuit and even to the US Supreme Court, if permitted.
Once the reexamination has been concluded, a “certificate of reexamination” is issued. The certificate makes any corrections to a patent as are required under the reexamination. If all the claims in the patent are rejected, the patent gets nullified.
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. Reexaminations are assigned serial numbers and cross referenced as child applications of originally issued patents.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 parteEx parte
Ex parte is a Latin legal term meaning "from one party" .An ex parte decision is one decided by a judge without requiring all of the parties to the controversy to be present. In Australian, Canadian, U.K., Indian and U.S...
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. The fee for filing a request for an ex parte reexamination is $2520.
Inter partes
Inter partes
The term inter partes is the Latin for "between the parties." It can be distinguished from in rem, referring to a legal action whose jurisdiction is based the control of property, or ex parte referring to a legal action that is by a single party....
reexaminations are initiated by member of the public, but said members of the public continue to participate in the proceedings. The fee for filing a request for an inter partes reexamination is $8800.
Duplicate requests for Inter partes reexaminations by the same requesting party are prohibited under 35 U.S.C. § 317.
Statistics
About 500 requests for ex parte reexaminations were filed in 2005, corresponding to about 0.33% of the total number of patents issued that year. About 60 requests for inter partes reexaminations were filed.Statistics released by the USPTO for reexaminations in 2007 showed that for ex parte reexaminations, claims were changed in 64% of the cases. In 26% of the cases, all claims are confirmed with no changes, while in 10% of the cases, all claims were invalidated. For inter partes reexaminations, claims were changed in seven of the eight cases that had been completed by the time the statistics were released.
NTP patents
The NTP patents covering BlackBerryBlackBerry
BlackBerry is a line of mobile email and smartphone devices developed and designed by Canadian company Research In Motion since 1999.BlackBerry devices are smartphones, designed to function as personal digital assistants, portable media players, internet browsers, gaming devices, and much more...
technology are currently undergoing a number of reexaminations because new prior art has been discovered which had not 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 initiated by the director. Some of the patents have had a number of 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 on the basis of the substantial new questions of patentability. It is yet to be determined whether NTP would narrow its claims to get around the rejections, or succeed in an appeal.
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 patentBusiness method patent
Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking, tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the...
s became allowable under the US patent law due to the 1998 State Street decision. The patent claimed an improved method for a child to swing on a swing.
The PTO director ordered a reexamination, and the claims were subsequently rejected. The patent owner elected not to appeal. A reexamination certificate was issued canceling all the claims.
Crustless peanut butter and jelly sandwich
entitled "Sealed crustless sandwichSealed crustless sandwich
A sealed crustless sandwich is a type of sandwich which has a filling sealed between two layers of bread. The two layers of bread are crimped together to seal in the filling and the crust is removed. A popular variety is peanut butter and jelly....
" was issued in 1999 to applicants Len Kretchman and David Gesked. The patent claimed an improved crustless peanut butter and jelly sandwich, which could be mass produced and sold in stores.
This patent has been widely ridiculed in the media as an example of an obvious invention, which should never have been granted a patent.
The patent was licensed to Smuckers
The J.M. Smucker Co.
The J. M. Smucker Company is a manufacturer of fruit spreads, ice cream toppings, beverages, shortening, natural peanut butter and other products in North America. Smucker's headquarters are located in Orrville, Ohio.- History :...
, which then introduced the Uncrustables brand of frozen no-crust sandwiches. Smuckers invested about $20 million to build a factory in Scottsville
Scottsville, Kentucky
Scottsville is a city in and the county seat of Allen County, Kentucky, United States. The population was 4,327 at the 2000 census.-Geography:Scottsville is located at ....
, Kentucky
Kentucky
The Commonwealth of Kentucky is a state located in the East Central United States of America. As classified by the United States Census Bureau, Kentucky is a Southern state, more specifically in the East South Central region. Kentucky is one of four U.S. states constituted as a commonwealth...
to produce the product. Its annual sales in 2005 were $US 60 million.
To enforce the patent, Smuckers filed a patent infringement
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
lawsuit against alleged infringer, Albie’s Foods. Albie’s Foods responded by filing a request for ex parte reexamination.
The examiner rejected the claims in the patent, and the rejection had been appealed to the BPAI. The BPAI rejected the claims, and the USPTO issued a notice that it intends to cancel all of the claims.
See also
- Interference proceedingInterference proceedingAn interference proceeding, also known as priority contest, is an inter partes proceeding to determine the priority issues of multiple patent applications. It is a unique procedure in the patent law of the United States. Unlike in most other countries which have adopted the first-to-file system,...
(U.S. patent law) - Opposition procedure before the European Patent OfficeOpposition procedure before the European Patent OfficeThe opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
- Scire faciasScire faciasIn English law, a writ of scire facias was a writ founded upon some judicial record directing the sheriff to make the record known to a specified party, and requiring that defendant to show cause why the party bringing the writ should not be able to cite that record in his own interest, or why,...
External links
- Reexamination chapter in USPTOUnited States Patent and Trademark OfficeThe United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
Manual of Patent Examining ProcedureManual of Patent Examining ProcedureThe Manual of Patent Examining Procedure is published by the United States Patent and Trademark Office for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates... - Optional Inter Partes Reexamination chapter in USPTOUnited States Patent and Trademark OfficeThe United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
Manual of Patent Examining ProcedureManual of Patent Examining ProcedureThe Manual of Patent Examining Procedure is published by the United States Patent and Trademark Office for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates...