Litigator Edited by the Law Firm of Grimes & Battersby The - PDF document

JULY/AUGUST 2009 VOLUME 15 NUMBER 4 DEVOTED TO INTELLECTUAL PROPERTY LITIGATION & ENFORCEMENT Litigator Edited by the Law Firm of Grimes & Battersby

The USPTO as a Forum for Resolving Intellectual Property Disputes Artem N. Sokolov and Travis B. Ribar Artem N. Sokolov, asokolov@sughrue.com, an interference could turn the potentially problematic is an attorney at Sughrue Mion PLLC ( www. patent against your competitor. sughrue.com ). Mr. Sokolov practices in all areas This article reviews reexamination and interference pro- of Intellectual Property law with an emphasis on ceedings as a tool for resolving patent disputes, including litigation of intellectual property matters as well as the cost and risk considerations, discusses the associated reexamination and interference practice. His practice timing requirements and provides some strategic consid- also includes the preparation and prosecution of patent applications in the electrical and mechanical erations for pursuing these options. arts, and rendering opinions on patentability, validity, Requesting Reexamination and infringement. Mr. Sokolov is fluent in Russian. of a Patent Travis B. Ribar, TRibar@Sughrue.com , is an attorney at Sughrue Mion PLLC ( www.sughrue. One option is to request reexamination of the poten- com ). He has represented clients in interferences tially problematic patent. Reexamination is a process by and in both ex parte and inter partes reexamination which a person (the Requestor) can request for the PTO proceedings. Mr. Ribar also has been able to use to reevaluate the patentability of the claims of a granted his background as a Patent Examiner in his patent patent. By and large, reexamination provides a low-cost, prosecution work, which focuses on the chemical arts. effective approach for resolving patent disputes. As such, it is no secret that the popularity of reexamination pro- It is Friday afternoon and you are the Intellectual cedures is on the rise in recent years. 1 Property counsel for a company whose next big product By statute, reexamination of an issued patent can only is only weeks away from launch. But on this day, you be requested on the basis of prior patents or printed come across a patent that may throw a wrench into those publications. 2 This means, for example, that if someone plans—a patent that may cover the next big product. is aware of an article or patent which may anticipate Once you launch, a lawsuit is sure to follow. So what are or render obvious the claims of an issued patent, they your options? Is there anything you can do to favorably may request that the PTO reconsider the issued patent. position your company in the weeks ahead? To be clear, grounds for requesting reexamination are Of course, if sued, the district court is one option. But limited to prior patent or publications. Other grounds this path is costly, uncertain and there is a possibility that of invalidity, such as prior sale, inequitable conduct, or your competitor will seek an injunction against your next issues under 35 U.S.C. § 112 cannot form the basis of a big product. On the other hand, by taking advantage of reexamination request. procedures available at the US Patent and Trademark A request for reexamination will be granted if the Office (PTO), you could potentially resolve the dispute patents or printed publications raise a “substantial new in a cost-efficient manner or even prevent a lawsuit from question of patentability” (SNQP) as to the claims at being filed. This is good news. issue. The good news for Requestors is that this standard Historically, the PTO has been thought of as the place is not particularly high. In fact, the grant rate for ex parte to obtain a patent, while patent disputes were handled by reexaminations is 92 percent, while for inter partes , this district courts. Such is no longer the case. At the PTO you number climbs even higher, to 95 percent. 3 Accordingly, can request reexamination of the potentially problematic the option of pursuing a reexamination is almost always patent. When filed early, a reexamination could delay or on the table, and is almost always worth a second look. even prevent a lawsuit, or may at least provide a basis for Also good news for Requestors is that prior art that was requesting a stay or contesting a request by your com- considered during the examination of the patent at issue petitor for injunctive relief. Reexamination requests are may still form the basis for a request for reexamination. granted in almost 95 percent of all cases, so this option In particular, previously considered art can form the should not be overlooked. Likewise, in certain scenarios basis for a reexamination if applied to the claims of the I P L i t i g a t o r JULY/AUGUST 2009 1