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The Presumption of Validity After Reexamination or Reissue

By Matthew C. Phillips and Kevin B. Laurence of Stoel Rives LLP

Matt Phillips and Kevin Laurence are partners at Stoel Rives LLP.  Together they teach the multi-day course “Patent Reexamination and Reissue Practice” for Patent Resources Group.

The presumption of validity codified at 35 U.S.C. 282 has been a mainstay of patent law for many years. Presently, only clear and convincing evidence can overcome that presumption. That is true whether or not the basis for invalidity has been considered by the PTO. However, the presumption is stronger when the PTO has considered - and decided against - the same validity challenge a litigant later raises in court. Thus, there is a different strength of presumption when a prior-art-based validity attack is based on so-called "new" art, as compared to "old" art. Moreover, there is a movement to replace the clear and convincing evidentiary standard with the lower preponderance standard for validity attacks based on new art and to reserve the clear and convincing evidentiary standard for only those validity attacks based on old art.

This article discusses the interplay between the presumption of validity - as it is now or as it may be altered - and post-grant proceedings such as reexamination and reissue.


The fact that a reference has been considered by the PTO strengthens the presumption that the patent's claims are valid over that reference. That is true whether the PTO's consideration of the reference was during original prosecution, reexamination or reissue. The strengthened presumption of validity is "especially di...

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