Legal Definitions - request for reexamination

A request for reexamination is a formal procedure initiated with the United States Patent and Trademark Office (USPTO) to challenge the validity of an already-granted patent. This challenge is based on newly discovered or previously overlooked "prior art" – which refers to any evidence that an invention was already known, used, or described in a printed publication before the patent's filing date. The purpose is to determine if the patent should have been issued in the first place, given this new information. Any party, including the patent holder themselves or a third party like a competitor, can file such a request.

• Example 1: A Competitor's Challenge
  "Tech Innovations Inc." holds a patent for a unique smartphone screen technology. "Global Electronics Corp.," a competitor planning to launch a similar product, discovers an obscure academic paper published five years before Tech Innovations' patent application. This paper describes a nearly identical screen technology. Global Electronics Corp. could file a request for reexamination with the USPTO, presenting this academic paper as prior art.

  Explanation: This illustrates how a competitor can use a request for reexamination to challenge a rival's patent by bringing new prior art (the academic paper) to the USPTO's attention, hoping to invalidate or narrow the scope of the existing patent and clear the way for their own product.

• Example 2: A Patent Holder's Proactive Move
  Dr. Anya Sharma received a patent for a novel medical device. Later, while reviewing historical scientific journals, she discovers an old, forgotten patent from the 1950s that describes a component very similar to one part of her device. To proactively address potential future challenges and strengthen her patent, Dr. Sharma could file her own request for reexamination, submitting the 1950s patent as prior art.

  Explanation: This demonstrates that even the patent holder can initiate a request for reexamination. By doing so, Dr. Sharma allows the USPTO to review her patent in light of the newly found prior art, potentially confirming its validity or adjusting its claims, which can make it more robust against future infringement lawsuits or challenges from others.

• Example 3: During an Infringement Lawsuit
  "BioPharm Solutions" is suing "MediCo Labs" for infringing its patent on a new drug compound. During the discovery phase of the lawsuit, MediCo Labs' legal team uncovers a previously unknown European patent application from the 1990s that clearly describes the same chemical structure as BioPharm Solutions' patented compound. MediCo Labs could then file a request for reexamination with the USPTO, using this European patent application as compelling prior art.

  Explanation: This example shows how a defendant in a patent infringement lawsuit can use a request for reexamination as a strategic tool. By presenting the newly discovered European patent application as prior art, MediCo Labs aims to have the USPTO review and potentially invalidate BioPharm Solutions' patent, which would undermine the basis of the infringement lawsuit against them.