Post Grant Patent Services: Ex Parte Reexamination of an Issued Patent

Ex parte reexamination is a procedure handled by the United States Patent and Trademark Office (USPTO) that reexamines the validity of an already issued patent. Any person or party is allowed to file the request for an ex parte reexamination including the patent owner or the USPTO itself, however if the requester is a third party, they are not permitted to participate in the reexamination process. The request is filed in an attempt to get the patent invalidated. An ex parte reexamination is conducted only between the USPTO and the patent owner (or their patent practitioner).

The request for an ex parte reexamination can occur at any point after patent issuance and must be based on prior art patents or publications that have potential to raise substantial new questions of patentability. When filing an ex parte reexamination request at the USPTO, the following should be included:

1. A statement addressing each substantial new question of patentability based on prior patents and printed publications;
2. A copy of every prior art patent or printed publication;
3. An identification of every claim for which reexamination is requested, accompanied by a statement of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested;
4. A copy of the complete patent for which reexamination is requested (including any disclaimer, certificate of correction, or issued reexamination certificate);
5. A certification that a copy of the reexamination request filed by a person or party other than the patent owner has been served to the patent owner; and
6. A certification by the third party requester that the statutory estoppel provisions [of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1)] do not prohibit the requester from filing the reexamination request.

A filed ex parte reexamination request does not automatically begin the reexamination process. The USPTO reviews each request to determine if the statutory requirements for reexamination have been met. If the request is granted, the USPTO will notify the patent owner and allow them the opportunity to respond to the request and provide arguments and evidence in support of the patentability of the claims under reexamination. A patent examiner will then conduct a reexamination of the patent based on the prior art references cited in the request and any additional information provided by the patent owner.

During the reexamination process, the patent holder, or more likely their patent attorney, can expect to engage in communications with the patent examiner through USPTO issued office actions. These office actions allow the patent attorney to respond and argue against any specific concerns or proposed rejections. If the claims are rejected or amended during reexamination, the patent owner and their legal counsel can appeal the decision to the Patent Trial and Appeal Board (PTAB). An experienced patent practitioner can serve as legal counsel on either side of a reexamination, defending of the validity of a patent or arguing for the invalidation of one.

Read more about ex parte reexaminations in our article on questioning patent validity. Visit carsonpatents.com for our list of the post grant patent services we offer.

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