The Promise of Reexamination:  Fulfilled or Fizzled?

16 September 2011 Past Event

2011 Annual Meeting of the American Intellectual Property Law Association

The ex parte reexamination statute was enacted prior to the creation of the Court of Appeals for the Federal Circuit, during a time when the outcome of enforcement actions were unpredictable, at best, and often negative for patent owners. One goal of ex parte reexamination was to strengthen patents to withstand scrutiny by courts hostile to them by providing an alternative avenue for testing those of “doubtful” validity, with the ultimate goal of boosting the confidence of investors in patents, thus encouraging them to create and grow businesses.

Ironically, increasing interest over the last few years, particularly in inter partes reexamination, appears motivated by a perceived difficultly of challenging the validity of patents in district court. Yet, even with this uptick in interest, the number of reexaminations remains far below the levels the Patent and Trademark Office originally predicted, and relatively low when compared to the number of patents granted and the number of patent infringement disputes. Despite original intentions, reexamination has not supplanted litigation as the primary mechanism for challenging the validity of patents.

Furthermore, rather than proving to be a cost-effective alternative that boosts confidence in the validity of patents, reexamination is often conducted in parallel with district court litigation for purposes of gaining tactical advantage, driving up the cost and delaying enforcement of patents.  Reexamination thus appears to have done little to advance the goals of reduced costs and increased confidence in the strength of patents and the process of obtaining and enforcing them.

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