Ex Parte Reexaminations

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One vehicle for challenging a granted patent is a reexamination. Rothwell Figg's Ex Parte Reexamination attorneys have years of experience handling these specialized, high-stakes proceedings for clients in a variety of technical fields, and in a wide range of strategic contexts. For patent owners, we defend patents for which reexamination has been requested; for accused infringers or clients looking to cancel patents for strategic reasons, we use reexamination to invalidate patents – for instance, if anonymity is desired and/or an IPR petition is time-barred. The stakes can be very high, including deciding whether or not a pharmaceutical company can launch a drug product.

Reexamination is a strategic alternative to litigation. It takes place within the U.S. Patent and Trademark Office (USPTO) under a specialized procedure. The basic goal of the process is to challenge the validity of a granted patent by introducing new information – prior art not considered during the initial patent examination. Reexamination is often used in anticipation of or during litigation. In some cases, patent litigation is stayed pending the resolution of a reexamination.

Rothwell Figg’s experience with reexaminations provides our clients with an array of unique advantages, which are closely connected with the procedural components of the process. For example, defense of a patent in a reexamination proceeding may involve an interview with a patent examiner. The interview can have a substantial impact on the shape and trajectory of the proceeding as well as the final outcome. In preparation for these interviews, we research similar proceedings and interactions and bring a strong evidentiary showing to the interview to ensure both that we present the most convincing possible facts from the outset as well as throughout the proceeding. All these calculated steps inure to the benefit of our clients.

Another advantage our reexamination team brings to our work is our background in both patent prosecution and litigation. Most of our attorneys have experience in both fields, which makes us uniquely able to understand both how to convince examiners and navigate formal legal proceedings and, ultimately, appellate panels if necessary. Similarly, knowledge of both prosecution and litigation ensures our cases are built on a strong foundation that will survive the various stages of reexamination as well as through appeal.

Reexamination proceedings often raise unique strategic issues. Our experience enables us to anticipate these, and prepare effective responses. Examples include the effects of claim amendments during reexamination on recoverable damages for pre-reexamination infringement, stays of litigation pending reexamination, and other scenarios. We have seen these situations, know what to do, and, most importantly, avoid making errors arising from inexperience.

Clients particularly value Rothwell Figg’s ability to manage these prolonged, intricate cases, avoid surprises, and keep everything moving in the right direction. By avoiding procedural missteps, and by gaming out strategies along the way, we help propel the process towards a conclusion that favors our clients, protects their interests, and puts them in the best possible strategic posture. We are an experienced, professional, and highly responsive team that helps to allay client concerns, keeps the lines of communication open with the clients and the USPTO, and deftly represents our clients’ interests in a unique, very high-stakes patent proceeding.




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