The reissue and reexamination procedures of the U.S. Patent and Trademark Office (USPTO) are valuable tools for businesses that want to strengthen their patent portfolio or weaken that of their competitors. Reissue allows patent owners to correct errors in U.S. patents. Reexamination allows anyone to test the validity of a U.S. patent. Neither procedure affects the original patent until either a reissue patent is granted or a reexamination certificate is issued.
Benefits of Reissue
1. Reissue allows a patentee to correct a wide variety of errors in a patent wherein the error may include inadvertently obtaining a patent that does not cover all of the disclosed inventions the patentee intended to protect.
2. By Reissue patent a patentee can help to correct errors wherein the patentee inadvertently covers too much subject matter, such as an invention already known in the prior art which if not corrected would render the patent invalid.
3. In reissue, patentability issues may be submitted based on any type of prior arts (patents, printed publications, and prior knowledge, use, or sale of the claimed invention). Reissue applications are handled by examiners in the same patent-examining group that issued the original patent; thus, they are likely to have technical expertise relevant to the claimed invention.
4. In reissue, a patent owner can request automatic extensions of time for a fee, file additional continuation applications, and request continued examination (RCE) of a patent, each providing the patentee additional time and opportunity to address any problems in the patent.
5. Besides the abovesaid points, reissue can correct typographical errors in a patent's specification and drawings, incorrect listings of inventors, or inadvertent procedural errors made by the patentee during the patent-application process.
Limitations of Reissue
To be eligible for reissue, the patent owner must acknowledge and identify an error in the patent. But there are limits to the types of errors correctable through reissue.
1. A patentee gets a limited period (two years post issue of the patent) to correct the errors.
2. Second, even if a patentee requests a broadening reissue within the two-year time limit, the patentee may not broaden the original patent to recapture disclaimed subject matter.
3. Third, if a patentee made misrepresentations or intentionally failed to submit relevant prior art to the USPTO during the patent-application process, the patentee may not use reissue to correct such inequitable conduct.
4. Only a patent owner can request a reissue of the patent, but once the reissue process has begun, a third party may file a protest arguing why a patent claim is not patentable. Other than the protest, a third party cannot participate in the reissue process.
Benefits of Reexamination
In the US, businesses can challenge a patent's validity through a lawsuit before a federal court or through reexamination at the USPTO. There are, however, a number of advantages to reexamination.
1. First, reexaminations are much cheaper than patent lawsuits, which can cost millions of dollars. One of the main reasons for the high litigation costs is the extensive discovery permitted in U.S. federal courts. Reexaminations, on the other hand, are more focused, discovery more limited or nonexistent.
2. Second, in federal court, an issued patent is automatically presumed valid. Judges and juries in federal court can declare the patent invalid only if there is "clear and convincing" evidence. But in reexaminations, there is no such presumption; thus, it can be easier to invalidate a patent at the USPTO.
3. Third, most reexaminations can be requested anonymously. If a requester fears the patent owner is targeting the requester for a patent-infringement suit, then he can file a reexamination request anonymously through a third party, such as a patent attorney. In contrast, lawsuits in federal court require identification of the real party in interest.
4. Fourth, reexamination can be requested during litigation. Judges will often stay a patent litigation pending the outcome of a reexamination. The stay benefits a defendant because it gives the defendant time to prepare the case and search for additional prior art to use in an invalidity defense. The likelihood that a judge will grant a stay depends greatly on each judge's preference. Judges in the district courts of California regularly grant stays pending the outcome of a reexamination, whereas judges in the Eastern District of Texas rarely grant stays.
5. Fifth, even if a patent is not completely invalidated during reexamination, the USPTO will often reduce the scope of patent claims. Thus, a device or process that might have infringed a patent before reexamination might not infringe the same patent after reexamination.
Limitations of Reexamination
Reexamination poses some risks. Before the USPTO grants a reexamination request, it reviews the request and the prior art submitted with the request to determine whether the request raises a substantial new question of patentability. If the USPTO denies the request, it has, in effect, determined that the prior art submitted with the request would not invalidate the patent. The USPTO, however, rarely denies a reexamination request—only about eight percent of the time. Alternatively, the USPTO may grant the reexamination request but confirm the validity of the patent during reexamination. In both cases, the reexamination strengthens the patent, making it harder to assert invalidity later on. Thus, reexamination can backfire on a requester who intended to invalidate the patent but must instead deal with a stronger patent that survives reexamination. This is why patent owners often file reexamination requests for their own patents after learning of prior art that may affect validity. Indeed, approximately 40% of ex parte reexaminations—one type of reexamination at the USPTO—are filed by patent owners. Only patentability issues based on prior patents or printed publications may be submitted for reexamination. The central reexamination unit at the USPTO handles reexaminations. It deals with a broad variety of technologies, so examiners working on a reexamination may not always have the technical expertise most relevant to the claimed invention. Lastly, like reissue, reexamination cannot be used to correct inequitable conduct.
It can take from less than a year to several years for the USPTO to complete a reexamination, which can cause much uncertainty for companies waiting to make business decisions based on the outcome. The USPTO is charged to handle all reexaminations with special dispatch, especially for patents already in litigation. But if the reexamination unit is busy or if the patent under reexamination is in a popular technology area, the reexamination process can often be slow. Further, if the patent owner disagrees with the outcome of the reexamination, he can appeal to the USPTO's Board of Patent Appeals and Interferences, then later to the U.S. Court of Appeals for the Federal Circuit, each of which may take several years to resolve.
