Ex Parte Reexamination

Notwithstanding the new post-grant options established by the America Invents Act (AIA), Ex Parte Reexamination remains intact-- allowing a patent owner or third party to obtain another examination of an already-granted patent.

The request for reexamination may be brought at any point during the patent’s enforceability period, and must demonstrate “a substantial new question of patentability” for the matter to proceed. If review is granted, the Ex Parte Reexamination process continues with the following features:

• Upon written request to the U.S Patent & Trademark Office (USPTO), the identity of the party requesting reexamination is kept confidential, unlike post-grant proceedings.
• After the request is filed, the third-party is excluded from the proceedings unless the patent owner files a statement in opposition to the third party’s allegations.
• The patent owner may not enlarge the scope of a patent claim by amendment, but may propose an amendment to the patent to distinguish the claim from prior art or to remedy a decision negative to the claim.
• Ex Parte Reexaminations are heard by a three-person panel of examiners from the USPTO’s Central Reexamination Unit, unlike Post-Grant Reviews and Inter Partes Reviews, which are heard by the Patent Trial & Appeals Board.
• Only the patent owner may appeal the final decision of the Central Reexamination Unit, first to the Patent Trial & Appeal Board, then to the Court of U.S. Appeals for the Federal Circuit.
• Estoppel does not arise from an Ex Parte Reexamination.

Crafting a Post-Grant Strategy

The attorneys at Brooks Kushman are experienced in identifying, prioritizing, and pursuing or defending reexamination and post-grant review options according to each client’s needs and interests. Regardless of whether the path leads through administrative proceedings or courtroom litigation, we’re ready to guide you through every step along the way.

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