Intellectual Property Law

Patent Reexamination Used to Stall Patent Enforcement

By Lee Gesmer

Here a link to an interesting article in the May 5, 2008 issue of Forbes, that highlights the use of anonymous, ex parte requests for reexamination to the Patent Office. The result of a reexamination is to stall enforcement of the patent against possible infringers.

The article highlights the plight of Anthony Brown, a lawyer that purchased the patent for compression of an electronic file for transmission over a communications line (think JPEG). After Brown purchased the patent -

“A petition filed in 2000 by parties unknown asked the U.S. Patent & Trademark Office to reexamine whether the processes the patent described were novel enough to deserve a patent. The feds agreed to the review, a common practice if the questions raised seem substantial. The catch is that during the review the holder of the patent can’t demand licensing fees, and the patent’s life doesn’t get extended accordingly. The reexam of the JPEG patent lasted seven years”

After the patent survived that challenge, Brown hit his next roadblock -

“But last year saw yet another anonymous challenge. This one was filed by Chicago patent attorney Vernon Francissen, who declines to identify his client. Francissen suggested the JPEG patent’s current version had slipped through an overburdened system and was being applied too broadly. In March the Patent Office agreed to a second reexam, again putting up a roadblock to Brown’s licensing campaign.”

As a result of the impact of a successful request for rexamination, this has become an almost standard prodedure for defendants in patent litigation.

Full post as published by Mass Law Blog on April 25, 2008 (boomark / email).