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 ParteReexamination 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.
STRATEGY & FORESIGHT
Brooks Kushman understands the intricacies and implications of post-grant challenges, how to staff such matters, what resources to deploy, and the technical issues at the heart of each matter. Our attorneys know what it takes to vigorously represent our clients and prevail in such administrative proceedings and coordinate efforts with possible parallel district court litigation and on appeal, recognizing the impact a decision can have on a patent portfolio, market opportunities, and the bottom line. At the same time, our prosecution team works closely with our clients to develop and implement client-specific strategies to help insulate a patent portfolio from a post-grant challenge. In conjunction with our Patent Searchers, we can track related post-grant proceedings, monitor patent filings from our clients’ competitors, and search for and examine relevant prior art—to anticipate potential future challenges and institute proactive measures to minimize any potential risk. In view of the changing landscape and complex and competing interests at play, Brooks Kushman is able to leverage its depth of experience in all facets of IP, to help our clients’ maintain competitive advantage.