Sughrue Mion, PLLC is a premier firm for the protection of client’s rights through reexamination practice across all technologies. Whether the reexamination is ex parte or inter partes, or whether conducted in parallel with litigation or stand alone, Sughrue Mion has the specialized, dedicated team and proven track record to successfully defend or challenge the patentability of a granted patent through the administrative reexamination proceeding.
Ex parte reexamination has been around for almost three decades and frequently relied upon by patent owners to strengthen their patents over potentially problematic prior art. However, because of its ex parte nature, third parties have viewed this PTO proceeding as favorable to patentees and therefore an unattractive alternative to district court litigation for challenging competitor patents.
The availability of the more complex inter partes reexamination proceeding, which allows for much greater third party participation, has helped to level the playing field. This administrative proceeding has rapidly become an important and cost effective tool for obtaining a ruling on the validity of a patent outside of district court litigation. Through December 31, 2009, third parties have filed 808 inter partes reexaminations requests, over half of them in the last two years. Of the 134 proceedings completed, 51% resulted in all claims being canceled, 41 % required narrowing amendments to the claims, and only 8% had all original claims confirmed. Far better statistics than litigation, and at much reduced cost.
Faced with threatened or actual infringement litigation, companies are increasingly taking advantage of inter-partes reexamination. When filed early, inter partes reexamination can effectively delay or prevent litigation altogether. If litigation is already underway, inter partes reexamination can provide a basis for requesting a stay of litigation and for contesting a request by the patentee for preliminary injunctive relief.
