Reexaminations
There are a variety of reasons for initiating or prosecuting a reexamination proceeding, which can be both defensive and offensive in nature. For example, the results of a reexamination proceeding can have both a positive and negative effect on a pending litigation proceeding. Whether you are interested in testing the validity of a patent by initiating a reexamination proceeding or you are faced with defending the validity of a patent during a reexamination proceeding, the ZPS Group has expertise in all facets of the Patent Office reexamination process. Let the ZPS Group steer your reexamination proceeding in a direction that benefits you and not your competitors.
Ex parte reexamination of a patent allows the USPTO to review prior art patents and printed publications that create a substantial new question of patentability. Reexaminations are commonly filed on behalf of patentees, licensees, infringers, litigants, and can also be filed on behalf of corporations. Prior art considered in the reexamination is limited to patents and printed publications applied under 35 U.S.C. §102 and §103 or patents applied in a double patenting rejection. However, any information that the patent owner believes relevant to the patent and for any ground of patentability may be considered if the reexamination is ordered as a result of a supplemental examination procedure initiated by the patent owner.
Anyone can request an ex parte reexamination of a patent at anytime during the enforceable period of the patent, which is generally considered to be 6 years past the date of expiration. However, a request may not be submitted by a party subject to estoppel provisions from an inter partes review or post grant review. The request for ex parte reexamination must be accompanied by a reexamination fee. The fee for the request depends on whether the requester is a large entity or a small entity, or also a micro entity for patent owners. Since the reexamination files are open to the public, a real party in interest who wishes to remain anonymous can have a registered practitioner submit the request.
The request must include a statement of each substantial new question of patentability and the request must set forth how the cited art applies to each claim for which reexamination is requested. A patent owner who files the request may indicate how the claims distinguish over the prior art and may also propose amendments to the claims submitted with the request. Following an order granting the ex parte reexamination, a patent owner may file a statement on the new question of patentability including proposed amendments. Throughout the reexamination proceeding, however, amendments cannot be filed that enlarge the scope of the claims. If a patent owner files a statement on the new question of patentability, a third party requester may file a reply but otherwise cannot participate in the proceeding.