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REEXAMINATION
Pfizer recently
received an adverse determination of
the patentability of one patent (of
several) for Lipitor. The “Patent
Baristas"1 reported that
Lipitor is set to become the worlds
first $10 billion a year drug.
The adverse decision
was made regarding an issued patent
in response to an ex parte
reexamination request. Such a
request can be filed at any time
during the enforceability of the
patent. Technically the request can
be filed the term of the patent plus
the 6 year statute of limitations
for filing suit for infringement.
Reexamination may be
requested solely on written prior
art consisting of patents or printed
publications. The request must
explain how the cited prior art has
a bearing upon the patentability of
any claim of the patent. The
determination regarding the adequacy
of the prior art is made by the
Technical Center that was
responsible for the original grant
of patent. Reexamination is
ordered where there is a substantial
new question of patentability.
Again, the request for reexamination
should clearly demonstrate the
existence of a substantial new
question of patentability.
The USPTO has 3
months after filing of a complete
request to determine whether there
exists a substantial new question of
patentability. No input from the
patent owner is considered in making
this determination.
If reexamination is
ordered, the patent owner has 2
months to file a written response,
including any narrowing amendment of
the claims. The party requesting
reexamination has 2 months to file a
response to the patent owner’s
response.
After the statements
of both parties are received, the
reexamination occurs “with special
dispatch”. The product is an ex
parte reexamination certificated.
The patent owner has 30 days to
respond to the Office action.
1
Patent
Baristas
www.patentbaristas.com |
