Takeaways:

• Patent owner requested reexaminations are not an admission of claim unpatentability.
• Patent owners can and should control the reexamination request narrative.

Patent owners must consider the pros and cons of filing a request for ex parte reexamination of their patent. Many fear that by filing, they are admitting their claims are unpatentable. However, it is important to understand the difference between prior art that raises a substantial new question (SNQ) of patentability, and whether that prior art necessitates a narrowing of claim scope to remain patentable.

As is well known, neither a patent owner-initiated reexamination nor reissue can cure failing to submit relevant and non-cumulative prior art known during original examination. But there are many instances where art comes to light after a patent issues, and a patent owner wishes to confirm that art does not bar patentability of the issued patent claims. For example, new art discovered during foreign prosecution occurring after the U.S. patent issues. But if one is looking to cleanse the record from known art one must use supplemental examination, which these authors discussed in a previous article.

It is important for the patent owner to review and understand the patent’s prosecution history to ascertain, as specifically as possible, why the patent claims were allowed. If the examiner did not explicitly state a reason for allowance, then the patent owner may infer a reason from prosecution actions. A rare exception is the first action allowance with no stated reason for allowance. Here, the patent owner has more latitude when framing the SNQ in the request.

The request must provide a clear statement of an SNQ based upon prior art patents or printed publications. This statement must point out the art’s new technological teaching in relation to the ascertained original prosecution reasons for allowance. But nothing precludes the patent owner from additionally providing contentions why the technological teachings are not new to the prosecution record (i.e., cumulative to technological teachings considered on the prosecution record.) After all, it is possible that the Office will agree and deny the request. Any argument that can move this needle can be included in the request.

The request must also provide a detailed explanation for each proposed rejection or application of the art raising the SNQ for each claim potentially involved in the reexamination. When explaining the proposed rejections, it is permissible for patent owners to state why they believe a limitation is not covered by the new reference (novelty rejections). Similarly, when proposing obviousness rejections, the patent owner should include arguments why, despite the art raising the SNQ, the claims are patentable over the art. Arguments establishing no reasonable likelihood of combination success, a lack of motivation to combine the references, that the references are non-analogous to the claims at issue, or presenting strong evidence of secondary considerations are all candidates for inclusion at the request stage. The detailed explanation section provides patent owners the opportunity to show which claim limitations are taught by the references, and which claim limitations are not taught by the references.

By requesting the reexamination, patent owners can control the narrative. An owner-requested reexamination can frame the SNQ, proposed rejections, and issues raised by new art in a light more favorable to patent owner than the same prior art may be framed by a third party requester. And like all first impressions, controlling the narrative can be powerful.