Services > Patent Reexamination

Many law firms are still reluctant to pursue a litigation strategy which includes reexamination requests. The Reexamination Group within our firm, however, has seen from its own experience over the years that reexaminations are often effective in dealing with a competitors patents, even very strong patents. This belief is based on a familiar list of advantages that reexamination offers over litigation.

•  no presumption of patent validity at the Patent Office;
•  no requirement of proof of invalidity by clear and convincing evidence at the Patent Office
•  high level patent examiners, rather than sometimes less technically astute jurors, to consider patentability;
• a renewed duty for the patentee to disclose material information to the Patent Office, including information regarding patent litigation; and
•  the possibility that the patentee will make amendments or arguments which constitute disclaimers of claimed subject matter or which create estoppels that preclude the patentee's later assertion of the doctrine of equivalents.

There is also the major consideration of legal expense - reexaminations are not inexpensive, but considerably less expensive than the alternative of District Court litigation.

Though reexaminations, both ex parte and inter partes, continue to be less common than District Court litigation, they have already resulted in quite a number of notable successes for accused infringers.

Our Reexamination Group has therefore committed itself to following significant reexaminations, to identify successful strategies for reexamination requestors.