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Reexamination of Issued Patents
what they
are, how they work
Purpose: To determine the issue of patentability of one or more claims
of an issued U.S. patent in view of prior art patents and printed
publications.
Occurrence: Extremely rare. Less than 1% of issued U.S. patents
are reexamined.
Tribunal: Conducted at the examiner level.
How
provoked: Filing a reexamination request with the USPTO. If
request granted, a reexamination is declared.
Requester Eligibility:
Requester Identification:
Timing:
-
Any time during the enforceability period of an issued patent.
-
The
enforceability period of an issued patent is its term plus the six years,
and beyond if a patent enforcement action was filed before the end of the
six-year statute of limitations period.
-
(A patent cannot be infringed after
its term has expired, but a patent owner has up to six years after its term
to enforce the patent against pre-expiration infringements.)
Reexamination types:
USPTO
Reexamination filing fees:
-
$2,520 ex parte request.
-
$8,800 inter partes
request.
-
Additional
if directed to more than three independent claims or more than twenty claims
total.
-
Attorney fees separate.
Eligible prior art:
Ineligible prior art:
Ineligible bases:
-
Failure to disclose best mode.
-
Fraud on the patent office.
-
Failure to disclose.
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Prior invention by another.
-
Public use/sale more than one year prior to the patent’s effective filing
date(unless such
occurrences are sufficiently described in one or more prior art patent or
printed publication).
Request requirements:
-
Must explain how the disclosures of each cited prior art item apply to one
or more of the patent’s claims.
-
Must provide English translations of all pertinent parts of a non-English
patent or printed publication.
-
May (and should) point out claims not supported by an earlier foreign or
U.S. application whose filing date is claimed. Intervening prior art
against such claims can be cited.
Reexamination Declaration:
-
A
reexamination will be declared if the examiner finds that one or more
substantial issues of patentability exist.
-
If the examiner instead denies
the reexamination request, the requester has the option of petitioning the
Director for a review of the examiner’s decision.
Reexamination Consequences
-
Patent invalidated (all claims rejected)
-
Patent limited (claims narrowed, less than all allowed)
-
Patent remains enforceable during
reexamination process
Reexaminations --
expensive, time-consuming, sometimes necessary.
questions, inquiries
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contact the firm
(all contact modes)
or call 312.419-8055
Initial consultations start at $240.
The
firm’s charges for initial reexamination-potential evaluations start at $1,600
(single prior art patent or printed publication).
Further cost estimates available after initial evaluation.
Retainer
required.
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