Tips for Avoiding Appeal in Ex Parte Patent Reexamination

Defendants in patent litigation suits often seek reexamination of the asserted patents in hopes that the United States Patent and Trademark Office (USPTO) will find the patents to be invalid, and therefore unenforceable. As a patent owner seeking to assert a patent, it is often critical that the patent proceed through reexamination unscathed and that the patent remain enforceable. It can also be desirable for the reexamination to proceed quickly, as the related litigation is often stayed pending the outcome of the reexamination. A quick reexamination can only be achieved when appeals are avoided.

Nutter recently prosecuted the ex parte reexamination of U.S. Patent Nos. 5,951,836, 6,241,862, and 5,708,247. While numerous grounds of rejection were asserted with respect to each patent, reexamination certificates maintaining the validity of the patents were issued in all three cases after only a single applicant response and without the need for expensive and time-consuming appeals. Several strategies contributed to such a successful outcome.

First and foremost, it can be helpful to provide the reexamination specialist with a detailed agenda, draft arguments, and draft declarations well in advance of any in-person interview. By giving the specialist sufficient time to carefully review and weigh the arguments and evidence, the interview can be used as an opportunity to obtain valuable feedback from the specialist and to ensure that the subsequent response provides the content required by the specialist to overcome the rejections.

Second, it is best not to rely solely on expert declarations. While such declarations can be extremely effective and are often necessary to address obviousness rejections, many specialists only weigh expert opinions heavily when they are accompanied by additional supporting evidence. In many cases, the prior art of record can provide evidence to bolster expert declarations. It is good practice to emphasize in the response any language in the prior art that is consistent with statements made in the declaration.

Finally, it is important that the response contain not only a technical explanation as to why the claimed invention distinguishes over the prior art, but also legal analysis necessary to support a finding of novelty and non-obviousness. There is no substitute for well-reasoned legal analysis supported by case law.

While the outcome of any reexamination is highly case-specific, the above strategies can be helpful in putting forth the best possible arguments for patentability and hopefully avoiding appeal.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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