In recent years, the United States Patent and Trademark Office (“PTO”) has been plagued with a substantial backlog of pending patent applications awaiting examination. The PTO reports that it now takes a little over two years on average to provide an applicant with a first office action. As a result, the PTO has been under increased pressure to accelerate the examination process.
One means by which the PTO attempts to decrease average application pendency is by increasing the productivity of patent examiners. Guidelines promulgated by the PTO to govern examiner productivity provide that an examiner should allot no more than 16-36 hours for the entire examination of an application, depending on the examiner’s experience level and the complexity of the technology. While the majority of examiners do an outstanding job considering the time constraints under which they operate, examiners simply do not have the time to perform a comprehensive search of the prior art (patents, pending applications, printed publications) before making a determination as to patentability. Further, patent applicants are often themselves unaware of material prior art that may have a bearing on the patentability of the invention.
The end result is that the PTO often grants patents without the examiner ever having considered material prior art that could have potentially affected the examiner’s determination of patentability. For the vast majority of patents that are never challenged, this poses no problem. Some patent owners live under the comforting but sometimes mistaken belief that their patents are ironclad, having been through the rigorous and expensive examination process. It is usually not until the patent owner attempts to enforce a patent through litigation, or leverage a patent through a licensing deal, that the validity of the patent is cast into doubt.
When material prior art is found that may affect the validity of a patent its owner is seeking to exploit, the consequences can be significant. If potentially damaging prior art is found by a licensee, the amount the licensee is willing to pay in royalties will likely diminish or the licensee may refuse to take a license under the patent altogether. Similarly, an accused infringer in a patent infringement suit may decide to dramatically lower a settlement offer or choose to proceed with the litigation, expecting that the subject patent will be invalidated by the court based upon the newly found prior art. After finding prior art that may invalidate a patent, a common defense tactic of accused infringers in patent litigation is to file a request for reexamination of the subject patent with the PTO, and simultaneously move for a stay of the litigation pending the outcome of the reexamination. This tactic can successfully postpone a patent infringement suit for many years.
In order to avoid these potential consequences, we recommend that patent owners take a closer look at the strength of their patent portfolios to determine if there are any chinks in the armor of their patents. In particular, a prior art search covering both domestic and foreign patents and patent applications, as well as other printed publications such as trade and academic journals, should be undertaken. In the corporate setting, the named inventor of a patent may have found prior art material to the subject patent after the patent issued. Therefore, the inventor should be consulted in the course of investigating the prior art.
If potentially damaging prior art is found, the patent owner, in consultation with patent counsel, should assess whether it would be appropriate to bring the new prior art to the attention of the PTO through a process called ex parte reexamination. An ex parte reexamination is a process administered by the PTO that allows the owner of a patent to request that the examination of the patent be reopened to consider new prior art submitted to the PTO. Before filing a request for reexamination, the patent owner or patent counsel should develop a strategy for successfully overcoming the prior art that has been discovered.
If a reexamination is ordered by the PTO, an examiner will consider the new prior art and make a determination as to whether the claims of the patent should be rejected or allowed to stand. The examiner will then issue office actions to which the patent owner may respond with arguments and/or amendments to the claims. Finally, the examiner will issue a reexamination certificate that indicates the status of all claims following the reexamination.
Once a patent has been reexamined in view of the newly considered prior art, the patent owner can be more confident that it will withstand challenges from accused infringers and the doubts of potential licensees. In this manner, a patent owner may take the initiative to strengthen its patent portfolio instead of playing defense when it is attacked. Carstens, Allen & Gourley, LLP’s experienced and knowledgeable attorneys stand ready to work with you to develop a comprehensive strategy for strengthening your patent portfolio. Please call us to discuss a strategy tailored especially for you or your business.
Zach Hilton is an associate at Carstens, Allen & Gourley, LLP. His primary areas of practice include patent and trademark prosecution, litigation and licensing.
This blog is maintained by Carstens, Allen & Gourley, LLP to inform readers of recent developments in intellectual property. Solely informational in nature, this blog is not intended to create an attorney-client relationship or to be used as a substitute for legal advice or opinions. For more information, please visit www.caglaw.com.
By Zach W. Hilton