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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Patent Reexamination & Expired Patents

Posted On: Mar. 10, 2011   By: Scott A. McKeown
expiredPatent Enforceability Key Factor In Patent Reexamination Eligibility, Not Expiration

In patent reexamination strategy, especially concurrent to litigation, timing is everything.

1. Timing of the original patent application dictates eligibility for inter partes patent reexamination. (i.e., on or after November 29, 1999)

2. Timing of a concurrent court proceeding may also control decision making. Inter partes patent reexamination is not a viable option relative to an advanced court proceedings. (See Sony v. Dudas)

3. Timing of the patent reexamination request, even the type of reexamination (i.e., ex parte or inter partes) will also greatly impact the ability to stay a parallel proceeding pending patent reexamination.

But what about expired patents? 

Recently, the court in APP Pharmaceuticals, LLC v. Ameridose (DNJ) denied the defendants motion to stay, in part, as one of the three patents in-suit (4,870,086) was not undergoing patent reexamination. The court emphasized that the ‘086 patent (which was expired) was not subject to patent reexamination, thus the litigation would continue at some point no matter what happened at the USPTO.

The decision, found here, also noted some other factors tending to favor continuation of the litigation independent of the patent expiration issue. Unfortunately for Ameridose, typically, seeking a stay where some patents are not subject to patent reexamination is a non-starter; as it was here.

The record does not specifically reflect the reason why the defendant did not pursue patent reexamination of the expired patent. However, it seems that Ameridose viewed the expired patent as less likely to weigh in favor of plaintiff prejudice (should a stay be entered) since there are no damages going forward.

But, let’s take a look at the patent expiration issue.

Of course, it is perfectly appropriate for a patent to be reexamined after expiration. In fact, the USPTO provides a separate claim interpretation standard for such cases. Unlike reissue applications, which cannot be pursued after expiration, patent reexamination is based upon the enforceability of the patent. The period of enforceability is determined by adding 6 years to the date of patent expiration. 37 C.F.R. § 1.510(a)

Looking only at the filing date, the ‘086 patent would seemed to have expired on November 24, 2006. However, this patent’s term was extended, due to the regulatory review delay of the Food & Drug Administration. The extended expiration date of the ‘086 patent is September 24, 2010. Thus, the ‘086 patent remains enforceable (for past damage purposes) until September 24, 2016.

Surely, had patent reexamination been pursued, relief would not have been possible by operation of intervening rights. This is because an expired patent may not be amended. Still, the patent could have been invalidated by patent reexamination, and the odds of staying the case would have been greatly improved.

This case was brought to my attention by the great Docket Navigator.

2 Responses to “Patent Reexamination & Expired Patents”

  1. Paul F. Morgan says:

    Speaking of important timing, what will happen to reexaminations if S.23 (with all of its last-minute amendments) passes in the House as it did in the Senate? Those new post-grant proceedures which are limited to only a few months after a patent issues may be a wonderful boon for all trolls, and perhaps for maintaining high patented drug prices against generic drug mfg. challengers, because such very-time-limited proceedures will be almost useless for almost all competitors and defendants to be able to challenge invalid patents, because patents are rarely asserted or litigated until much longer than that after they issue.
    PLEASE post ASAP a complete summary of all the post-grant proceedure deletions and limitations in S. 23 that will impact current reexamination practice, not just the additions.

  2. Paul F. Morgan says:

    BTW, I did a “find” for every mention of “Chapter 30″ in S.23 as passed. and did not find any changes beng made in present ex parte reexamination. But Chapter 31 [inter partes reexamination] will be very extensively changed.