Reexamination

Group at a Glance

  • 19 members
  • Group members have handled reexams in the areas of biotechnology, electronics, medical devices, software, various mechanical technologies, and numerous consumer products.
  • Group members have extensive experience representing both patent owners and requestors, and particular expertise in reexams having parallel litigation.

What Matters to Our Clients

Strong Base of Experience

In the world of patent reexaminations, experience counts.  Reexams (as they are commonly called) are highly specialized proceedings before the USPTO. The stakes are high for both the patent owner and the requestor challenging an issued patent through reexamination, and procedural and substantive rules governing reexamination differ in material ways from the process for obtaining a patent.  For example, the reexamination process is far less flexible or forgiving, and the deadlines are short. Because members of our Reexam Group have been successfully handling reexams for many years, we have a level of experience few other firms can match.

Our clients benefit from our knowledge of both the strategies that are most successful under different reexam situations and how best to maneuver within the rigid timelines for responding to USPTO actions and submitting evidence.  The expedited nature of reexamination makes it imperative to quickly develop the strategy it will take to “win” the reexam and to focus on that goal.

USPTO patent examiners decide the final result of reexaminations. Our long history and extensive experience of working closely with these examiners is invaluable.  Our focus on IP means we also stay abreast of new USPTO procedures and regulations and know how to interpret and incorporate those coming from the Central Reexamination Unit, which handles all reexams.               

Experience on Both Sides of Table

Reexams can be initiated by the patent owner, third party requesters, or even the USPTO directly; therefore, knowing how to initiate as well as defend a reexam is a critical skill.

Our Reexam Group counsels patent owners on creating the best strategy for the reexamination, focusing on the 90+/- days it takes the USPTO to declare a reexamination, because that is when actions could mean the difference between saving or losing a valuable patent.  

We help clients evaluate the reasons for invalidation asserted in the reexam request to determine which claims to fight for and which claims to amend, or even which claims to add.  Our experience enables us to evaluate and collect the most persuasive evidence to overcome the prior art or any obviousness rejections and to succinctly argue for the patentability of the claims while positioning for possible appeal.

If a reexam does not meet a client’s goals or provide sufficient value to warrant the time and expense, we have the expertise to create alternative strategies.  These might include filing a reissue application to correct defects in the patent, filing a continuing application, or considering a litigation strategy.

We also advise clients wishing to challenge questionable patents, whether they are seeking to invalidate or merely narrow another’s patent. Our experience has taught us how to develop strong documentary evidence, including prior art or arguments that would not come out in litigation.

Strength Across Multiple Disciplines

Our reexam team is made up of members from a range of disciplines and industry knowledge, including patent prosecutors at the cutting edge of a variety of technologies and litigators who help clients develop strategic and tactical litigation approaches. As a result, we have the capability to handle reexams for patents in any technical area or covering almost any product or service.

Clients benefit from our experience with both types of reexams (ex parte and inter partes).  Although the number of ex parte reexams still considerably outweighs inter partes reexams, numbers of both are growing rapidly, so having the experience to recognize which to use, in addition to when and where to use them, provides added value to clients.