Back To The Patent Office

Submitted by patentadmin on Fri, 08/21/2009 - 13:14

Patent litigation is costly and the price is not likely to decrease. Given this state of affairs, one might ask whether there is some way to limit or reduce the costs of enforcing a patent against infringers or – we shudder to think of it – defending against a charge of patent infringement. The answer to both parts of this question is YES and, more interestingly, in both cases the answer involves the use of patent reexamination.

It should come as no surprise that reexamination of the patent(s) in suit can be a cost-effective defense strategy. By reexamination, we mean here knock-down, drag-out, he-man inter-parties reexamination, which historically (albeit a short history) offers a 60 percent probability that all claims of the reexamined patent(s) will be cancelled and a further 20 percent probability that at least some of the claims will be amended. Only 12 percent of patents emerge from inter-parties reexamination with all claims confirmed. These are better odds than a defendant will get in a courtroom, where, on average, only 33 percent of patents are found invalid. While inter-parties reexamination isn’t cheap, it is a lot less costly than courtroom litigation. Moreover, it is SLOW, typically running more than three (3) years. A defendant can use this time to negotiate a settlement, redesign its product or wait for the plaintiff to die of old age.

Under some circumstances, reexamination can also be a cost-effective strategy for the plaintiff. By reexamination, we mean here wimpy, namby-pamby ex-parte reexamination. If the accused infringer (slimeball) is seeking to delay justice by relying chiefly on a bogus, but costly, prior art defense, i.e. invalidity due to anticipation or obviousness, the patentee may submit the patent(s) and the cited prior art to the PTO in an ex-parte reexamination. Although ex-parte reexamination is also slow – although not as slow as the inter-parties variety – it is relatively inexpensive. The benefits to the plaintiff of a successful reexamination should be self-evident.

THE LESSON TO BE LEARNED: Although litigation can be lots of fun – at least for the litigators – plaintiffs and defendant, who pay the bills, may wish to consider the possible benefits of reexamination.

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