NTP sued RIM in 2001 and after a long legal battle looks close to getting an injunction slapped on RIM. However, since the case was filed, new examples of "prior art" -- supposed evidence that NTP wasn't really the first to come up with the innovations in question -- have been presented. Based on those new examples, both RIM and the PTO have initiated re-examinations of NTP's patents. While the courts roll on using the evidence available at the time of the suit, the PTO is deciding whether the new facts mean NTP's patents aren't even valid.
The re-examination process was introduced in 1981 as a quicker and less expensive way to determine whether a patent is valid, said PTO spokeswoman Brigid Quinn. A patent holder, the PTO or a third party can initiate a re-examination it has apparent prior art on a patent, she said. If the agency decides to look at the patent, one of its examiners studies the evidence and makes an initial ruling, called an office action. The patent holder gets to review that action and respond, and the examiner may then make a second determination. This process may continue for another round or two in some cases, Quinn said.
In some cases, new prior art is introduced while a re-examination is in progress, Quinn said. This can lead to "non-final" actions, some of which came in the RIM case, that are issued pending examination of the additional evidence.
Even a final action by an examiner can be appealed to the Board of Patent Appeals and Interferences, part of the PTO, Quinn said. This process alone could take six to 12 months, according to James Wallace, an attorney for NTP at Wiley Rein and Fielding LLC, in Washington, D.C. Further appeal can be made to the U.S. Court of Appeals for the Federal Circuit, Quinn said.
The 1999 law allowed third parties to also respond to office actions, Quinn said. That process, which is available for more recent patents, made re-examinations more rigorous but also more time-consuming, according to Stephen Maebius, an attorney at Foley and Lardner LLP, in Washington, D.C.
"I think the patent office has been responding to criticism over the years that re-examinations were stacked in the patent owners' favor," Maebius said.
RIM is one of the few companies that has taken advantage of the 1999 law, attorneys said. Most are afraid that losing at the PTO will affect their prospects for success in court, according to Kent Richardson, vice president of intellectual property at Rambus Inc., the memory technology company that has sued several companies for patent infringement.
For small patent holders, the new process is a burden, according to Ronald Riley, president of the Professional Inventors Alliance, which represents small inventors.
"That increased the cost of re-examination by at least an order of magnitude," Riley said.