Pittsburgh Intellectual Property Attorney Ralph Fischer's Article on Patent Reexamination Published by The Legal Intelligencer and Law.com

An article written by Ralph G. Fischer — an associate in the Intellectual Property Section of Buchanan Ingersoll & Rooney's Pittsburgh office — was published in the June 19, 2009, edition of The Legal Intelligencer. The article, titled "Patent Re-Examination: What, When and Why It's Used in Litigation, was also posted to Law.com's Legal Technology section on June 22, 2009, under the title "Call a Re-Examination to Attack a Patent."

According to Fischer, "Over the last few years, re-examination proceedings have increasingly been favored as a tactic for responding to threats of patent infringement litigation. … The U.S. Patent and Trademark Office, or USPTO, takes another look at the validity of the claims of a patent in view of prior art patents or printed publications that are found to raise a substantial new question of patentability to the claims of the patent in question during a re-examination. If claims survive the re-examination, the USPTO issues a re-examination certificate to those claims. These claims may include original patent claims or narrower claims presented during the re-examination."

Fischer explained that, "Federal patent law provides that any party can request a re-examination of an issued patent. … By statute, the USPTO must review a re-examination request within three months of receiving that request and determine whether it raises a substantial new question of patentability. … Often, re-examination is used by accused infringers in an attempt to resolve patent validity disputes in a less expensive forum or in the hope of delaying or staying a lawsuit for a number of years. Less often, a re-examination is sought by a patent owner to ensure prior art that was not previously considered by the USPTO in examining its patent is considered prior to asserting that patent against an accused infringer to strengthen the patent."

In the article, Fischer goes on to evaluate certain strategic considerations that should be made prior to seeking re-examination.