This is a guest post by Cliff Hyra of Hyra IP.  He also has a personal blog with tons of great insights on patents, Patents 101.

If you are aware of a competitor who has been issued a patent improperly, there is an administrative remedy available to you at much lower cost than a lawsuit.  This administrative option is the reexamination procedure.  In a reexamination, an issued patent is reviewed by the Patent Office in light of your input and may be invalidated.

There are two types of reexaminations, ex parte reexamination and inter partes reexamination.  In an ex parte examination, the only input allowed from the a third party is in the initial stages when a reexamination is requested.  After that, the reexam is conducted by the examiner and the patent owner, without any further input from a third party.

In contrast, inter partes proceedings are adversarial and similar to a trial, with third-party input throughout the process.  Inter partes reexaminations are (exceedingly) rarely requested, due to the fact that they are expensive and can lead to a loss of rights if the parties end up in litigation.

Therefore, this article addresses the ex parte reexamination procedure.

Request for Ex Parte Reexamination: Fees

A request for ex parte reexamination carries a government fee of $2,520 and is typically a lengthy and complex document requiring quite a bit of work by a lawyer.  You can expect total costs to range from$10,000 up.  Nevertheless, this is a bargain compared to litigation.

Request for Ex Parte Reexamination: Requirements

A request for reexamination may be filed by any person (including the patent owner) at any time during the enforceability of a patent.  Besides the fee mentioned above, such a request must include (37 CFR 1.510):

• A statement pointing out substantial new questions of patentability based on prior patents and printed publications
• An identification of the claims for which reexamination is requested and an explanation of the relevance of the cited prior art to every such claim;
• A copy of every patent and/printed publication relied upon;
• A copy of the entire patent to be reexamined; and
• A certification that a copy of the request was served on the patent owner, or a duplicate copy of the request if service was not possible.

Note that, in accordance with requirement 1, the request must be based on prior art- not informalities such as a lack of written description- and must raise substantial new issues of patentability.

An issue of patentability is new if it has not previously been considered by an examiner.  An issue of patentability may be new even if it is raised by prior art that was considered by the examiner, as long as the examiner has not addressed that exact issue (e.g., a particular way of combining the references).

Request for Ex Parte Reexamination: Decision and Subsequent Procedures

A proper request for ex parte examination will be decided within three months.  If the examiner finds that a substantial new issue of patentability has been raised, an order for reexamination will be issued (35 U.S.C. 304, 37 CFR 1.525).

If not, the Request will be denied. A requester has one month from this denial to petition the PTO Director to reverse this decision (37 CFR 1.515).  If such petition is not granted, the decision is final and cannot be appealed.

If reexamination is ordered, the patent owner may make a formal statement in response within two months (37 CFR 1.530).  If the patent owner formally responds, a third-party requester has two months to reply (37 CFR 1.535).  If no formal statement is made, no reply may be entered.

The Examiner then proceeds with the reexamination, rejecting or allowing claims essentially as in a normal examination.  The requester plays no further role.

Any questions?  Leave them in the comments below.  I will discuss the reexamination procedure in greater detail in the future.