For only a little more than a $2000 filing fee, one can force a reexamination of an existing patent.
This is what a request for reeximantion looks like. It is, of course, a legal document and probably should be prepared by a patent attorney, but anyone with a bit of sense that can follow directions can do it.
They can be very effective when done properly. It basically challanges the claims of a patent within the Patent Office itself, avoiding the delays and exorbitant costs of the courts. Also, the (likely) prospect of endless appeals is taken out of the picture, since the Patent Office does have final say on what it grants a patent for. Or, as the case may well be, denies it on reconsideration.
What, exactly, is a "reexamination application" you may ask. The best definition is given
here, in the fourth paragraph under the topic "After Issuance". Things to note:[list=1][*]The evidence submitted with the request has to be hard fact, copies of printed publications and manuscripts, no hearsay evidence or "I remember that this was so back then" allowed.[*]
Anyone may file a reexamination application, but once it's filed, that person no longer has anything to do with the proceedings. So the entire argument you wish to make has to be made entirely within the application. Once it's received by the Patent Office, that's it! They will then give it consideration and make a decision.[*]With a Reexamination Application, you may attack individual claims of a patent instead of trying to take on an invention as a whole, which is what you have to do in patent litigation within the court system. In other words, say you find for-sure, definitive prior art that was overlooked in the original filing that covers only one or two of the claims of an invention. You can then ask that these specific claims be excluded from the patent or modified (and if they are modified, they can only be narrowed, not broadened) because the claims, as written, gives the patent more than it's allowed.[*]Within the reeximination application, you can show how the newly found prior art may prove that the patent in its entirity was granted in error. That it was, in fact, obvious to one skilled in the art at the time or was even in common usage. However, the argument has to be made with force, there isn't a chance to answer questions or go into detail later. Remember, once they receive the application, the person that filed it is out of the loop.[/list=1]
There's a (very lengthy!) text
here that I want to pull some quotes from, since they describe what it's all about much better than I could:
2.8.1 Q. If I think some patent (software or otherwise) should never have been
granted, what can I do?
A. One choice is to ask the Patent Office to reexamine the patent. Pros are that it is
much less costly than litigation, and there is no requirement that you satisfy the
conditions for a DJ action (see below). Cons are that only documentary evidence
(no live witnesses) may be submitted, and you don't get to participate fully as an
adversary as you would in court. You'd have to pay the fee for re-examination,
approx $2K.
...
C. Yet another choice, if you have made, used, or sold something regarding which
you have a good-faith apprehension of being sued by the patent owner, you may
initiate a declaratory judgment (DJ) action. This forces the patent owner to "put up
or shut up" -- to proceed as if s/he had sued you for infringement, or to give up and
say you do not infringe. If you show that the patent is invalid, the result is that the
court invalidates the patent.
2.8.2 Q. I have information in the form of a patent or printed publication that I think
bears on the validity of an issued U.S. patent. I wish to make sure that if the patent
is acted upon (e.g. asserted in litigation, reexamined, or reissued) my information
will be taken into account. I am not, however, willing to pay the fee (ca. $2K) for a
reexamination application. What may I do? May I do it anonymously?
A. Prepare a submission of the patent or printed publication, together with an
explanation in writing of the pertinency and manner of applying such prior art to at
least one claim of the patent. The citation of such prior art and the explanation
thereof will become a part of the official file of the patent. If the person making the
citation wishes his or her identity to be excluded from the patent file and kept
confidential, the citation papers must be submitted without any identification of the
person making the submission. You should then do one of the following:
1. Prepare an extra copy of the submission, and send it to the patent owner at the
correspondence address which the patent owner has filed with the Patent Office. In
the copy you send to the Patent Office, attach a statement that a copy of the same
has been mailed to the patent owner, giving the details of the address used, or,
2. File the submission with the Patent Office in duplicate. In your submission,
make reference to the U.S. Patent Number. Authority: 35 U.S.C. sec. 201, 37
CFR sec. 1.501, MPEP sec. 2202. If you want an ackowledgement that the
submission was received by the Patent Office, enclose a self-addressed stamped
post card detailing the contents of your submission. The Patent Office mail room
will stamp the card and mail it back to you. Besides assuring that the reference will
be considered during any subsequent reissue or reexamination proceedings, a
possible further effect of your submitting a reference to the Patent Office is that it
may come into the possession of parties approached for license by the patent
owner. It is commonplace that one approached by a patent owner will order up a
copy of the file wrapper. In doing so, one would receive with it the references, if
any, submitted by third parties.
Long story short- for a bit more than two grand, you can take prior art that wasn't listed in the original patent application to both whittle away at the individual claims of the patent, effectively narrowing the breadth of what it covers, or (in some cases) completely invalidate a patent.