CleanTech Open Patent Strategies: Reexamination

Many cleantech companies and industry groups are rethinking traditional patent strategies and forming new ones that I call “open patent strategies.” Open patent strategies use patent resources to both protect proprietary innovation and keep new technical domains clear for adoption and use of new technologies.

Fortunately, a number of new tools and techniques have been developed that can be used to help carry out an open patent strategy. Many of these tools have been tested and were put into place during the rise of high-tech, finance, biotech and nanotech industries in a fairly strong patent climate over the last two decades. It is interesting to speculate how these tools may play out in clean tech to support an open patent strategy.

One tool being increasingly used in the United States is patent reexamination. By filing a request for reexamination at the United States Patent and Trademark Office (USPTO), a third-party (called the requestor) can have a patent re-examined for validity. The catch is the requestor must be able to show that there were earlier patents or printed publications (journal articles, books and the like) such that the original patent was not really new or was obvious. Reexamination is often used in high-tech and electronic industries to reexamine patents concurrent with district court litigation.

My colleague, Pauline Pelletier and I, did a quick search of newly filed reexamination requests since 2007 to see the level of activity, if any, by the cleantech industry. It still seems early for cleantech. We have a database tracking all recent filed reexamination requests. We searched title information for broad cleantech terms like “solar, wind, smart grid, geothermal, fuel, carbon sequestration, batteries, renewable energy, carbon reduction, global warming, and transportation (hybrids)” and drilled down from there.

Though our search was limited, we found at least 7 reexamination requests recently filed against patents involving a fuel cell, improved cooling, biofuel, cleaner batteries, and a cleaner combustion engine.

We will keep you posted as more clean tech reexamination requests are filed. In the meantime, I’d challenge cleantech groups to coordinate and consider filing reexam requests for blocking patents that are overbroad and clearly not patentable as part of an open patent strategy to keep technical domains clear.

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2 comments on “CleanTech Open Patent Strategies: Reexamination

Interesting post. The reexamination procedure, which has been around since 1981, is definitely a great “tool” to invalidate an overly broad patent. While orders of magnitude cheaper than patent litigation, the legal costs are still quite high for a startup venture. In 2007, the AIPLA reported that the average legal costs for a reexamination is nearly $13k. I have recommended to my startup clients that they head down this path only if a potential investor is holding back an investment because of an overly broad patent owned by a competitor.

New statistics were recently published by the CRU in April for ex parte and inter partes reexams. The statistics cover reexam requests and certificates issued through March 31, 2009.

Success rates of third party requestors continue to be strong in the published data.

For inter partes requests:

-55 certificates have issued out of 609 filed.

-Only 7% had all claims confirmed.

-73% had all claims canceled.

-20% had claim changes.

For ex parte requests filed by 3rd-party requestors:

-3806 certificates have issued.

-27% had all claims confirmed.

-13% had all claims canceled.

-60% had claim changes.



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