A significantly less expensive alternative to challenging the validity of a patent through litigation, patent reexamination has become an increasingly popular choice over the past few years for accused patent infringers. Patent reexamination is also sometimes requested by a patent owner, in an attempt to strengthen a patent before asserting it in litigation or licensing it to third parties. A patent reissue is another proceeding that can be invoked by a patent owner to correct mistakes in an issued patent.

Kilpatrick Townsend's Patent Reexamination & Reissue team was formed to centralize our collective experience and knowledge in patent reexamination and reissue matters. Collectively, the team has handled more than 100 patent reexamination proceedings at the United States Patent & Trademark Office on behalf of both patent owners and third-party requesters. Our team has also handled dozens of patent reissue proceedings on behalf of our clients.

A patent reexamination is an administrative proceeding through which the United States Patent & Trademark Office reconsiders the validity of a previously issued patent. During a patent reexamination, the patent examiner reconsiders whether the patent claims are novel and/or non-obvious over prior art patents and/or printed publications cited by the party that invoked the proceeding (i.e., either the patent owner or a third party). Other types of prior art and theories of patent invalidity cannot be asserted during a reexamination and must instead be raised in litigation. As compared to a typical jury of laymen, a patent examiner will have a high level of technical experience in relation to the patented subject matter. Furthermore, unlike a jury, the patent examiner is not required to presume that the patent is valid and is therefore not constrained by having to find “clear and convincing” evidence to support a finding of invalidity.

Patent reexamination proceedings are often initiated during or in anticipation of patent litigation. Courts have the power to stay the litigation proceedings pending completion of the reexamination, but are sometimes reluctant to do so. Recognized as a national leader in both patent litigation and patent prosecution services, Kilpatrick Townsend has handled many matters involving patent infringement litigation and concurrent patent reexamination proceedings. In some cases, Kilpatrick Townsend attorneys served as litigation counsel for the patent owners, while also defending concurrent reexamination proceedings or working closely with outside lawyers who were defending the reexamination proceedings. In other cases, Kilpatrick Townsend attorneys were retained as primary reexamination counsel to initiate or defend patent reexamination proceedings, while outside lawyers served as litigation counsel.

Ex parte and inter partes patent reexamination

An ex parte patent reexamination proceeding can be initiated by the patent owner or a third party. This proceeding is available for all unexpired U.S. patents and involves only the patent owner and the United States Patent & Trademark Office; beyond the filing of a request for ex parte reexamination, a third party cannot participate. An inter partes patent reexamination proceeding must be initiated by a party other than the patent owner. This proceeding is available only for unexpired U.S. patents that are based on patent applications filed on or after November 29, 1999. The third-party requester remains an active participant throughout the proceeding.

Both types of reexaminations require intimate familiarity with the rules of practice and procedure in United States Patent & Trademark Office, as well as technical experience in the patented subject matter. Building on its leading patent prosecution practice, with deep and wide-ranging technical experience, the Kilpatrick Townsend Patent Reexamination & Reissue team is well-suited to handle even the most complex patent reexamination matters. For example, several of our attorneys are currently representing a patent owner in multiple inter partes reexaminations, where the subject patents and international counterparts thereof have been and are concurrently involved in high-stakes litigation around the world. Many of the international counterpart patents are also the subject of nullity actions outside the U.S. and/or oppositions at the European Patent Office. The team works closely with the patent owner, U.S. litigation counsel, non-U.S. litigation counsel and the firms handling the nullity and opposition proceedings to address important issues that arise when a patent is being asserted and challenged in multiple concurrent proceedings, such as insuring that positions taken or amendments made in the reexamination proceedings are consistent with those taken in the other proceedings.

Patent Reissue

A patent reissue proceeding allows a patent owner to address an error in a patent that is deemed to render the patent wholly or partly inoperative or invalid. The error in question must have been made without deceptive intent and is manifested as a defective specification or drawing, or by the patent owner having claimed more or less than it had a right to claim. A patent owner may attempt to broaden the scope of the patent claims only when the reissue application is filed within two years of the original patent issuance.