smoking-gunass=”size-full wp-image-2005 alignleft” title=”smoking-gun” src=”” alt=”smoking-gun” width=”135″ height=”143″ /> The legislative history of 35 U.S.C. § 312 suggests that a purpose of the substantial new question of patentability (“SNQ”) prerequisite is to prevent patent owner harassment via seriatim requests for reexamination.[1] Consistent with that purpose, MPEP § 2240.II provides:  

In certain situations, after a grant of a second or subsequent request for ex parte reexamination, where (A) the patent owner files a petition under 37 CFR 1.182 as part of the statement or as the statement, and (B) it appears clear that the second or subsequent request was filed for purposes of harassment of the patent owner, if the petition is granted, prosecution on the second or subsequent reexamination would be suspended.  {Emphasis added.}

However, absent an overt and documented threat to tie up a patent in reexamination, can a patent owner establish a “clear” intent by the third party requester to harass a patent owner? The answer to date appears to be no.  The contributors of this blog are unaware of a single successful 37 C.F.R. § 1.182 (“182”) petition (i) to suspend a second or subsequent reexamination or (ii) to vacate an order granting a second or subsequent reexamination due to patent harassment. With the emerging use of reexamination as a litigation strategy, it is difficult to imagine that ex parte reexamination has not been misused to harass patent owners.  So what can patent owners do to avoid serial ex parte requests? When the patent in reexamination is in district court litigation, the patent owner should seek an order from the court requiring the third party requester (i) to submit all purported SNQs in a single subsequent reexam request to prevent harassment and (ii) to agree to be estopped from filing further reexam requests when a NIRC is mailed. If the case is stayed, the patent Owner should seek stipulations that no further requests wil be filed, and that thedefendant will be bound by the outstanding request. Outside of judicial management, however, the patent holder appears to have little recourse with respect to harassing filings.  While petitions may be pursued to seek vacatur of serial requests for reexamination, if harasssment is the sole basis and there is no smoking gun, it is unclear how many requests must be filed to reach the USPTO’s unspoken threshold of pain.

[1] See In re Recreative Technologies, 83 F.3d 1394, 1397 (Fed. Cir. 1996).