What’s in a Reexam — Two-Part Series: Part One

MARK TERRY, ESQ.

Patent owners, accused infringers, investors, manufacturers, and licensing entities all have different reasons to test or defend patent validity. Patent Office review proceedings offer an alternative to resolving every validity dispute entirely through federal litigation.

Congress and the USPTO replaced inter partes reexamination with inter partes review, or IPR, as part of a broader effort to create a faster and more specialized process for evaluating issued patents. Ex parte reexamination also remains available with more limited participation by a third-party requester.

These proceedings can be less costly and faster than district-court litigation, but they may also make it easier for challengers to attack issued claims. The growth in review petitions has therefore created strategic opportunities and significant risks for patent owners.

Estoppel rules are intended to prevent parties from repeatedly relitigating the same validity issues after a Patent Office decision. That can improve efficiency, but the timing and scope of a petition must be coordinated carefully with any parallel infringement case.

Patent owners and challengers should evaluate the strength of the prior art, the procedural forum, litigation timing, and the potential commercial consequences before initiating or responding to a Patent Office review.