Re-examining patents
By Gerald S. Geren, Lee, Mann, Smith, McWilliams, Sweeney & Ohlson -- Design News, December 20, 1998
When reviewing a U.S. patent, a good researcher will try to find out if the U.S. Examiner was aware of identical or similar technology in granting the patent.
The U.S. Patent and Trademark Office (U.S. PTO) has a defined procedure to reconsider its decision to issue a patent. Let's examine how the process works.
The review process. To begin, a petition must be filed with the U.S. PTO. The petition must be based upon documentary evidence and must raise a new substantial question of patentability. Moreover, the question should be based on new prior art or pre-invention technology that was not considered when the patent was allowed. Prior art requires documentary evidence; oral representations or recollection won't suffice.
The patentee or a third party can file a petition. The U.S. PTO then reviews it and determines either to grant the petition and start the reexamination process or to deny the petition.
By denying a petition, the PTO in effect is saying it does not believe that the newly identified prior art hurts the patented invention's patentability. This could be viewed as strengthening the presumption of the patent's validity. Thus, before filing the petition, anticipate and plan for this outcome. If a denial is not the outcome you seek when you request a review, it could have adverse consequences in litigation or in future negotiations.
New examination begins. On the other hand, the U.S. PTO may grant the petition, and then a new examination of the patent is begun. During reexamination, the patent claims can be amended with arguments favoring patentability or decisions appealed. However, only the U.S. PTO and the patentee are parties to this reexamination. Third-party initiators are not notified, and their arguments are not considered. Once begun, the examination is not limited to the newly cited prior art, and thus the examination may be broad.
If the patent is reexamined and found to be patentable over the newly identified prior art, a reexamination certificate is issued. A favorable reexamination can effectively enhance the patent's presumed validity. This enhancement can be particularly important if it arrives in time to affect litigation or negotiations. On the other hand, it probably will not have much effect upon the public's "intervening rights." In principle, this means that newly created rights cannot be used retroactively on actions taken between the times when the original patent was issued and when the reexamination certificate was issued.
If the patent is found to be un-patentable, the original object of the petition may have been achieved and the patent eliminated.
Consider these significant risks to the reexamination process. If you or your firm decide to move ahead, plan your response to each possible result. Before you begin, a cost/benefit analysis may be appropriate as well, since the process can be expensive. Government fees and petition preparation fees can add up quickly.
Some seek to include the third-party petitioner in the reexamination process, but the present process remains unchanged.
Thus, a procedure to reexamine U.S. patents does exist, but do not file a petition until you decide that the benefits outweigh the risks.
Legal Questions
Q What is the current status of government fees in the U.S. Patent and Trademark Office?
A Patent fees have been increased under various legislation by surcharge amounts. That legislation has expired. New legislation or rules now govern the amounts actually due. This issue was part of the federal budget debate.
Q Is the 'on-sale' question now before the Supreme Court a significant issue?
A Yes. The issue revolves around what 'on-sale' means. This is important in defining when the one-year U.S. grace period for filing a U.S. patent application begins. The Court addressed whether 'on-sale' means 1) a finished product, 2) an inventory of products, or 3) a marketable idea without a tested product. The 'on-sale' definitions have been seen as conflicting. The decision suggests 'on-sale' can mean a completed, but not physically existing, invention.
Q Can you describe the current discussion about 'methods of doing business'?
A In the past it was a generally held belief that 'a method of doing business' was not patentable. But a recent case indicates that is not the case, particularly if the method is coupled to computer technology.
Q Does a patentee have an obligation to 'police' an industry for infringements of their patent?
A Under some circumstances, yes, particularly if the patentee should have known of the infringement. Ultimately, however, this requires a case-by-case evaluation.
