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While reexamination has been around for a long time. Congress passed the American Inventors Protection Act of 1999 for inter partes reexamination involving the patent office, patent owner and requester. The Act had some problems which were addressed by the 21st Century Department of Justice Appropriations Authorization Act of 2002.
Reexamination statute 35 USC 302 provides a reevaluation of an issued patent based on prior art that was previously not considered (or understood) by the USPTO during the initial patent examination. The types of prior art submitted can be issued patents, printed publications, software programs or affidavits of experts.
The reexamination request is fairly straightforward. It is a written request by patent owner or third party (ex parte) pointing out a "substantial new question of patentability." The USPTO has three months to review it. If the request is denied, the decision cannot be appealed. If the request is accepted, the patent owner must file any comments within two months. A third party requester has two months to file a response to the request. Under the old rules, third party involvement stops at this point.
The 2002 revision to the American Inventors Protection Act of 1999 created optional Inter Partes Reexamination Proceedings. In addition to the existing Ex Parte Reexamination Procedure it overruled In Re Portola Packaging, Inc., and now there can be reevaluation of an issued patent based on previously considered prior art. For inter partes reexamination, the rules are the same for the old ex parte application. For the inter partes proceeding the requestor must be identified, whereas in ex parte the requestor need not be identified.
The inter partes reexamination proceedings have the same written request requirements as an ex parte procedure. The third party requester must be identified, however. The USPTO must review the request within three months. If the request is denied, the third party requester can request reconsideration. If the request is accepted, the patent owner must file any comments within two months; a third party requester then has two months to file a response to the request. The reexamination process continues with the third party, who is privy to all communications between the patent owner and the examiner. The third party requester can file written comments within 30 days of each response of the patent owner to the examiner. A reexamination certificate is issued at the conclusion. The government fee for requesting an inter partes reexamination is $8,800. Under the new reexamination rules, the appeal rights of a third party requestor are the same as those of a patent owner.
One of the larger problems for the new inter partes reexamination rules, however, is estoppel. If an inter partes reexamination is requested and a patent is found either invalid or valid, that determination is an estoppel and will preclude any further litigation of the patent's validity in court and will be binding on any court proceeding. However, there is still no estoppel for ex parte patent reexamination.
How courts will react to a reexamination proceeding while there is litigation going on depends on when the application for reexamination is filed. If it's filed while court proceedings are well underway, the court is likely to continue with the proceedings. If filed prior to litigation, the court may consider staying its determination.