Patent Requests for Reexamination
The San Francisco law firm Dergosits & Noah LLP has extensive experience handling requests for reexamination on behalf of plaintiffs and defendants in patent litigation. Authorized by federal law, a request for reexamination involves asking the Patent Office to reexamine an existing patent on the grounds that there is a substantial new question of patentability.
A party can file a request for reexamination at any point during a patent's enforceability period. The request must include reasons why there is or is not a substantial new question of patentability that the Office should consider. The USPTO will then decide whether or not there is a "substantial new question of patentability." If there is a substantial new question, the examiner will then perform an analysis similar to the one performed when the original application was filed. The balance of the procedure is dependent upon whether the reexamination was filed as ex parte or inter partes.
Requests for reexamination are expensive and time-consuming; however, in certain cases they may be the best way to achieve a cost-effective, successful result. Our attorneys recognize the importance of the process and that the arguments we present can impact the value of the patent.
Useful Litigation Tool
Requests for reexamination can be useful for both plaintiffs and defendants in infringement litigation. Regardless of which party requests the reexamination, district court infringement proceedings can often be stayed while the USPTO conducts the reexamination.