Patent Reexamination Search: Everything You Need To Know
A patent reexamination search is a public tool provided by the United States Patent and Trademark Office (USPTO).3 min read
2. Benefits of Patent Reexamination
3. Risks of Patent Reexamination
4. Types of Reexamination
Updated October 27,2020:
A patent reexamination search is a public tool provided by the United States Patent and Trademark Office (USPTO). It provides extensive information about both pending and issued patents. Re-examinations are marked consistently in this database.
Using the Patent Search Database
- First, office workers can access the PALM system and click on Palm, followed by General Information. This will allow access to the Intranet's General Information Display.
- The patent number is entered in the search box. When the Patent Number Information link appears, they will choose the Continuity Data selection to find the reexamination number.
- Keep in mind that about 10 days will pass before a filed reexamination is indicated in the system.
Benefits of Patent Reexamination
Patent lawsuits can cost millions because the U.S. courts allow for extensive discovery. Reexaminations are much more affordable because discovery is either not allowed or limited.
If a patent has been issued, the federal court automatically considers it valid unless "clear and convincing" proof to the contrary is present. This is not the case with reexaminations, so it is easier to declare a patent invalid at this level.
In most cases, it is possible to remain anonymous when you ask for a reexamination. This is useful if you are afraid that you may be a target of a patent infringement lawsuit. You can make the request through your patent attorney or another third party. If you file a federal suit, on the other hand, you must identify yourself.
During litigation, reexamination can be requested. This occurs in about 25 percent of reexamination cases. Often, the judge will hold the litigation proceedings until the reexamination proceedings are complete. This helps the defendant by providing more time to do a thorough prior art search in an attempt to declare the patent invalid.
Even if the patent is not found completely invalid, reexamination often successfully limits the scope of a patent claim, which means that a product that previously infringed on a patent may now be legally allowed.
Reexamination can also be used to strengthen a patent when you discover prior art during the search process. This is the case in about 30 percent of requested reexamination. If the patent is deemed valid by the USPTO, you can successfully bring a lawsuit against infringement.
If the scope of a patent claim is limited by the USPTO, this may give you intervening rights over certain types of liability.
Risks of Patent Reexamination
Reexamination is not a risk-free process. The USPTO will determine whether the request brings the patentability of an invention into question when compared with prior art. If the request is denied, the patent is not invalidated by the prior art; however, this occurs only with about 8 percent of requests.
In some cases, the request may be granted and the validity of the patent affirmed. This makes the patent stronger and is thus a negative consequence for the requester since he or she will have a harder time challenging the patent in question in the future.
The reexamination process can take several years in some cases, which creates uncertainty for businesses in the interim. Although all requests are supposed to be handled quickly, especially when patents are already in litigation, the process can be backlogged (particularly in tech and other busy areas).
Reexamination outcomes can be challenged through the Board of Patent Appeals and then to the U.S. Federal Court of Appeals. This can last an additional few years for each appeal.
Types of Reexamination
The USPTO offers both ex parte and inter partes reexaminations. The former proceeding includes only the USPTO and the patent owner, while the latter proceeding also involves the person who made the request for reexamination.
With inter partes, all arguments from the requester must be raised during the proceeding. Additional challenges will not be allowed in future proceedings. On the other hand, ex parte reexamination allows challenges to be made using any argument in all subsequent legal proceedings. However, your identity is no longer kept private.
Inter partes reexaminations tend to be more successful than ex parte because of the ability of the requester to provide evidence and arguments. With ex parte proceedings, about 60 percent of the patents had their scopes reduced, 30 percent affirmed as is, and 10 percent invalidated.
If you need help with a patent reexamination search, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.