Over the course of the last decade, patent reexamination has been one of the most valuable tools in the patent landscape because of its impact on enforcement, licensing, valuation, transfer, and sale of U.S. patents.
The Sterne Kessler team has handled over 400 reexams at the United States Patent & Trademark Office on behalf of both patent owners and third party requesters. Our team has also been retained as special reexamination counsel or reexamination expert in many others. Selected for our knowledge of patent litigation in the courts and at the United States International Trade Commission and our prosecution, interference, reissue and appeal practices at the USPTO, we have acted as counsel in some of the most high profile reexaminations.
Historically, there have been two types of reexaminations – ex parte, available for all unexpired U.S. patents, and inter partes, available only for unexpired U.S. patents having an application filing date on or after November 29, 1999. However, inter partes reexaminations are no longer available at the USPTO (as of September 16, 2012) as a result of the passage of the America Invents Act. These proceedings have been replaced by inter partes review proceedings. It is important to note that there is still an active backlog of thousands of inter partes reexaminations still being handled in the Central Reexamination Unit (CRU) at the USPTO – the CRU was created in 2005 to handle all reexamination proceedings at the USPTO.
Reexamination can only involve prior art in the form of patents, printed publications and admissions by the patent owner, and cannot raise other defenses available in patent litigation. A reexamination can be filed on patents in contemplated or ongoing district court and USITC litigation, creating a "parallel universe" involving the determination of validity of the same patent. Courts have the power to stay their proceeding pending completion of the reexamination.
The Sterne Kessler reexamination team is highly experienced having represented both inventors/patent holders and third party requestors in ex parte and inter partes reexam proceedings at the CRU, Board of Patent Appeals and Interferences, and the United States Court of Appeals for the Federal Circuit. In fact, we find about 50% of those we advise are patent owners while the other half are third parties. This affords us a clear and comprehensive view of the strengths and weaknesses of the reexam process from a practical perspective, resulting in the development and deployment of the strongest strategic and tactical positions.