Reexamination was created to reconfirm the presumed validity of a patent without requiring the patentee to endure the expense of litigation. The Patent Act allows anyone to request reexamination of a patent based on newly discovered prior art. Upon finding that the request raises a substantial new question of patentability, the Director of the United States Patent and Trademark Office may order reexamination. Even if a request is not made, the Director may sua sponte order a reexamination. Such reexaminations are only initiated when questions of public policy arise and there is no interest by any other pson. However, in practice, the decision to order reexamination is made by officials other than the Director based upon public outcry under a different standard than set forth in Title 35. This practice forces independent inventors into a reexamination that may take many years to complete and results in claims being invalidated or revised. Two recent reexaminations of high profile patents have created controversy among patent practitioners. The reexaminations were ordered after an independent or small entity inventor received a substantial judgment against a large company. In both cases, the Director sua sponte ordered an ex pare reexamination while the judicial proceedings of the case were still ongoing.
Amy L. Magas, When Politics Interfere with Patent Reexamination, 4 J. Marshall Rev. Intell. Prop. L. 160 (2004)