A U.S. patent can be challenged by requesting that the Patent Office reexamine the claims of the patent. An effective reexamination request blends detailed technical analysis of the patent and prior art with a persuasive explanation of why the claims of the patent should not have been allowed by the Patent Office in view of the prior art.

Unlike firms that focus only on patent prosecution or only on litigation, Klarquist Sparkman has expertise in technically complex patent prosecution and high-stakes patent litigation. Our reexamination practice group capitalizes on this expertise and combines strategic insight and knowledge of the latest trends in patent law with a thorough understanding of technical issues and Patent Office practice.

Our reexamination practice group helps clients understand the strategic implications of filing a request for reexamination. While reexamination was established by Congress as a cost-effective alternative to expensive patent litigation, it can also be part of a comprehensive litigation strategy. For example, because reexamination proceedings are part of the official Patent Office record for a patent, they can often be used to invalidate overly broad claims that have been asserted by a patent owner and to narrow the scope of other asserted claims. Additionally, in some cases, active litigation is suspended while a reexamination proceeding is pending. Of course, if the claims of a patent are invalidated or substantially narrowed in reexamination, litigation may be forestalled entirely. And, regardless of the eventual outcome of reexamination, discussing a ready-to-file reexamination request can advance settlement by causing a patent owner to weigh the technical merits of a case against the certainty of settlement.

Our Record of Success

Klarquist Sparkman’s attorneys have filed ex parte and inter partes reexamination requests against dozens of patents in the electrical, computer and mechanical fields. In some cases, we have partnered with litigation counsel at other firms to prepare and file reexamination requests.

The definition of “success” in reexamination varies with the individual case and the strategic goals of a client. Obviously, if all claims of a patent are cancelled, the request is successful. Even when a patent survives reexamination, however, the patent owner may have been forced to amend the claims, thereby eliminating potential past damages and/or vesting the party requesting reexamination with certain intervening rights, or disavow a claim interpretation that otherwise might have been problematic for the party requesting reexamination. In many cases, preparing and filing a reexamination request helps facilitate early settlement on fair and reasonable terms. In any event, Klarquist Sparkman’s attorneys will carefully consider a client’s objective and strategically implement a reexamination strategy towards that objective.

Attorney contacts for our Reexamination group: Joseph Jakubek or Richard Mc Leod.