What’s in a Name? Why Reexamination Is Not a Re-Examination

Key Takeaways

• Reexamination is a limited proceeding
• In Reexamination, the patent’s original claims are not subjected to a full examination

Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination (Reexamination), and the now defunct Inter Partes Reexamination. Established by 35 U.S.C. § 302 in 1981, Reexamination of a patent allows a requester (e.g., anyone: a patent owner, a known or anonymous third party, or the Director of the USPTO) to request Reexamination of a patent at any time during the enforceability of that patent. If filed after expiration of the patent, the claim interpretation changes to district court standards, but no amendments are allowed or new claims.

35 U.S.C. § 302 Request for reexamination.

Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301. The request must be in writing and must be accompanied by payment of a reexamination fee established by the Director pursuant to the provisions of section 41. The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. Unless the requesting person is the owner of the patent, the Director promptly will send a copy of the request to the owner of record of the patent.

One might think that this means that if a Reexamination request is granted, the patent will be subject to a re-examination of the claims of that patent. However, that is not what happens. 35 U.S.C. § 304 states, in pertinent part,

35 U.S.C. §304 Reexamination order by Director.

If, in a determination made under the provisions of subsection 303(a), the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question. […].

The USPTO and courts have interpreted the statute’s “for resolution of the question” as limiting to the scope of the Reexamination. Further, 37 C.F.R. § 1.552 defines a Reexamination as a limited proceeding, and not a new patent application. Policy in the Central Reexamination/Reissue Unit (CRU), where Reexamination proceedings are conducted, has long been to “answer the question(s) asked.” Thus, a Reexamination proceeding is limited to the patent’s claims being examined solely on the basis of the patents or printed publications that raised a “substantial new question” (SNQ) of patentability as outlined in the request. The patent’s original claims are not subject to full examination or rejections based in 35 U.S.C. §§ 101 or 112. Nor can prior art that is not based upon “patents or printed publications” be utilized.

It is possible for a patent owner to amend and add new claims during Reexamination, when the amendments and new claims do not enlarge the scope of the patent. As 37 C.F.R. § 1.552 prescribes, any amended or new claims are also examined based on 35 U.S.C. § 112. But generally, CRU examiners do not conduct any new prior art research, nor do they exceed the boundaries of the prior art raising the SNQ. There is no re-examination in a Reexamination proceeding. Ultimately, the proceeding will conclude with the patent being “re-issued” with the same patent number and an appended Reexamination Certificate summarizing the claim status as a result of the Reexamination.