Sterne Kessler Goldstein Fox

Reexamination has become one of the most valuable tools in the patent landscape because of its impact on enforcement, licensing, valuation, transfer, and sale of U.S. patents.  The Sterne Kessler reexamination team has handled over 150 reexams at the United States Patent & Trademark Office on behalf of both patent owners and third party requesters  Our team has also been retained as special reexamination counsel or reexamination expert in many others.  Selected for our knowledge of patent litigation in the courts and at the United States International Trade Commission and our prosecution, interference, reissue and appeal practices at the USPTO, we have acted as counsel in some of the most high profile reexaminations.
 
There are two types of reexaminations - - ex parte, available for all unexpired U.S. patents, and inter partes, available only for unexpired U.S. patents having an application filing date on or after November 29, 1999.  Reexamination can only involve prior art in the form of patents, printed publications and admissions by the patent owner, and cannot raise other defenses available in patent litigation.  Patent owners can file only ex parte reexaminations, while third party requesters can file both ex parte and inter partes reexaminations (assuming there is no privity to the patent owner). 

There has been a rapid rise in reexaminations.  For USPTO FY2008, there were 680 ex parte and 168 inter partes  reexaminations instituted compared to 524 and 59 in FY2005 and 392 and 21 in FY2003, respectively.  In addition, a reexamination can be filed on patents in contemplated or ongoing district court and USITC litigation, creating a "parallel universe" involving the determination of validity of the same patent.  Currently, in over 40% of such litigations there is a parallel reexamination and the percentage is increasing.  Courts have the power to stay their proceeding pending completion of the reexamination.  Historically, reexamination was viewed as slanted in the favor of the patent owner.  This perception discouraged accused infringers from filing reexaminations.  However, with the creation in 2005 of the Central Reexamination Unit at the USPTO (which now handles all reexams), and the impact of the Supreme Court's 2007 KSR decision, there has been a rapid increase in the use of reexaminations by third party requesters not in privity with the patent owner.

Our Team

The Sterne Kessler reexamination team is highly experienced having represented both inventors/patent holders and third party requestors in ex parte and inter partes reexam proceedings at the CRU, Board of Patent Appeals and Interferences, and the United States Court of Appeals for the Federal Circuit.  In fact, we find about 50% of those we advise are patent owners while the other half are third parties.  This affords us a clear and comprehensive view of the strengths and weaknesses of the reexam process from a practical perspective, resulting in the development and deployment of the strongest strategic and tactical positions.

The Reexamination Center

For a comprehensive look at news, events and analysis related to patent reexamination, see The Reexamination Center.

Additional Resources