What Is A Patent Reexamination?

Patent reexamination is a process where an inventor or a third party can have a U.S. patent reexamined by a USPTO patent examiner to verify that the claimed subject matter is patentable.  A request for a reexamination can be filed by anyone at any time during the period of enforceability of a patent. To request a reexamination, the inventor or a third party must submit a "request for reexamination," which will include, at a minimum, the following:

• Statement addressing each "substantial new question of patentability" based on prior patents and printed publications; 

• Claim identification and explanation of why reexamination is requested; 

• Patent or printed publication from which petition will rely on during reexamination; 

• A full copy of patent at issue; 

• Certification of service of the request for reexamination on the patent owner, if applicable; and 

• Certification of any third-party requester that the statutory estoppel provisions of 35 U.S.C. 351(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the request for reexamination.

After reviewing the reexamination materials above, if the USPTO finds that the request indeed raises a substantial new question of patentability, the USPTO will order a reexamination.

Who Can Petition For A Patent Reexamination?

Investors and third parties can file request for reexamination. Often before initiating litigation, an inventor will file for a reexamination to ensure that a patent remains valid over the particular newly discovered prior art. This will give the inventor a greater assurance that the patent remains enforceable and potentially lucrative. Requests for reexaminations can also be filed by third parties, some of whom may be already embroiled in an infringement lawsuit. A reexamination can be a cost-effective way for third parties to keep invalidation and, potentially, put a federal district court trial proceeding on hold pending the outcome of the reexamination. However, once the request for reexamination is initiated, the USPTO does not allow the initiating third party to participate in the reexamination process even if that third party has valid complaints about the proceedings or the evidence used therein. Our Dallas patent attorneys specialize in patent reexamination proceedings and other post-grant proceedings. We understand how to protect the property rights of inventors best.

Patent Reexamination Lawyers in Texas

Our Dallas Patent Reexamination attorneys have earned a reputation for aggressive, responsive, efficient, and most importantly, successful litigation. While we are prepared to take every case to trial, we know from our clients' perspective that often, the best litigation is the one that settles in mediation. Our straight forward unbiased guidance can help you avoid litigation whenever possible. However, if needed, our litigators are skilled in negotiation techniques and have a reputation for achieving very favorable results for our clients both in-court and out-of-court. Our IP lawyers can prepare and file patent reexamination petitions, given our extensive IP skills and experience.