Patent Reexaminations
Whether you’re holding a patent or having one asserted against you, reexamination may be the best step you can take. The number of patent reexamination filings have soared in recent years as more companies use them as a tool in litigation and in strengthening their patent portfolios.
Reexaminations can be requested:
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As part of a litigation defense strategy to weaken the allegedly infringed patent
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To slow the pace of litigation while the reexamination is underway
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To clear up newly discovered enforcement issues
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Before filing an infringement suit, to preempt a reexamination request from the other side
The higher the stakes, the more important it is that the reexamination be handled thoroughly and strategically. Schwegman, Lundberg & Woessner's (SLW) reexamination team works with you and your litigation team to use reexamination to the greatest advantage.
The importance of technical background and experience
Reexamination is a more technical proceeding than a trial, and as such, is best handled by an intellectual property law firm with many technical experts such as SLW. In addition to extensive technical knowledge, our patent reexamination team members have:
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handled numerous reexaminations (both ex parte and inter partes)
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litigated patent cases and argued appeals
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worked in industry as chief in-house patent counsels at Fortune 500 companies
Their wealth of experience helps give you the edge whether you find yourself considering offensive or defensive reexamination. We are the only IP law firm that captures 100 percent of the prosecution history information for all the claims of your patents in an interactive database. Our attorneys and clients can use our databases to obtain a graphic overview of the history of claims, interactively review file histories, or study the citation history of prior art.
What are the benefits?
One of the benefits of working with SLW is that our claim mapping capability and our thorough patent work makes it less likely that your patents will be reduced or demolished by a reexamination. Claims can only be considered invalid in light of prior art, publications and patents that precede the filing of the challenged patent application.
During the reexamination process, the patent owner and its attorneys communicate with the U.S. Patent & Trademark Office (USPTO) to alter claims, avoiding newly revealed art that poses a challenge to the patent grant. The claims emerging from the reexamination process are valid over the prior art. Art that is neutralized via reexamination can’t effectively be used as a trump card in litigation.
Great patent work at the start, with a clear view of the patent landscape, help reduce the risk of reexamination.
Our Team
Our team includes Lissi Mojica, Michael Lynch, Tom Reynolds, Stephen Durant and Tim Bianchi. The team members have handled numerous reexaminations (both ex parte and inter partes) and also have litigated patent cases, argued appeals, and worked in industry as chief in-house patent counsels at Fortune 500 companies. Their wealth of experience helps give you the edge whether you find yourself on the offensive or defensive side of a reexamination. They welcome your call to discuss your reexamination options.
Reexamination Resources
Tim Bianchi recently presented at the AIPLA Electronics and Computer Law Summit on "Strategic Use or Reexam after Patent Reform - Post-Grant Review and Inter Partes Reivew." You can get a copy of the handout from this presentation here.
Tim Bianchi was part of the 2011 Midwest IP Institute. His presentation "Drafting to Avoid the Order for Reexam / Review can be found here.
