Ex Parte Reexamination

Ex parte reexamination (EPR) is a USPTO administrative proceeding that has important distinctions from the more commonly used inter partes review: STATUTORY BASIS: 35 U.S.C. §§ 302-307; available since 1981; THRESHOLD: 'substantial new question of patentability' (SNQ) — a lower threshold than IPR's 'reasonable likelihood' standard; historical grant rate: ~90% of EPR requests are granted; FORUM: conducted by a USPTO Central Reexamination Unit (CRU) examiner — NOT a PTAB panel; GROUNDS: § 102 and § 103 based on PATENTS OR PRINTED PUBLICATIONS only (same as IPR); cannot challenge based on § 101 or § 112; PARTICIPATION: EX PARTE — the requester has VERY LIMITED participation; requester files the request; if the patent owner files a response, requester may file ONE reply; after that, the reexamination proceeds between the examiner and the patent owner; KEY ADVANTAGES OVER IPR: NO TIME BAR: EPR has no equivalent to IPR's one-year bar from service of complaint; can be filed at any time, including after the IPR time bar has passed; NO STANDING REQUIREMENT: anyone can file, including the patent owner themselves (a patent owner can initiate EPR to correct/strengthen their own patent); ANONYMOUS FILING: a third party can file through an attorney without identifying themselves as the real party in interest; no RPI disclosure required (unlike IPR); NO ESTOPPEL: filing EPR does NOT create statutory estoppel against the requester; the requester can still raise invalidity in district court litigation even after filing EPR on the same grounds; this is the most significant advantage over IPR for defendants who have missed the one-year bar; COST: $3,200 USPTO filing fee (small entity: $1,600; micro entity: $800); substantially cheaper than IPR ($19,000-$25,000 USPTO fees); attorney costs also lower ($20,000-$60,000 total) vs. IPR ($150,000-$500,000+); DISADVANTAGES vs. IPR: slower (18-24 months average vs. 12-month statutory FWD for IPR); less adversarial (requester cannot cross-examine patent owner witnesses); patent owner controls the reexamination after initial response with minimal requester influence; historical EPR claim cancelation rate: ~12-15% of reexaminations result in all claims canceled, vs. 40-50% for IPR.

The SNQ threshold for EPR institution is lower than IPR's 'reasonable likelihood' standard: DEFINITION: a 'substantial new question of patentability' (SNQ) means: the prior art raises a 'substantial question' as to the patentability of the claims; it does NOT require that the claims be likely unpatentable — just that a substantial question exists; the art does not have to be 'new' (never considered before) — art already cited during prosecution can raise an SNQ if it is now being applied in a new way or with a new combination; COMPARISON TO IPR THRESHOLD: EPR SNQ = lower threshold (questions about patentability); IPR 'reasonable likelihood petitioner prevails on ≥1 claim' = higher threshold (likelihood of success); in practice, ~90% of EPR requests are granted; IPR institution rates vary significantly by technology area; WHAT CONSTITUTES A GOOD SNQ: a combination of previously uncited references that together address all claim limitations; a single reference that was cited but never applied specifically to claim elements in the way now proposed; a reference showing the claimed combination was known in the prior art; NPL (non-patent literature) that the examiner did not consider that discloses the claimed invention; MULTIPLE SNQs: the EPR request can raise multiple SNQs based on different prior art references; each SNQ is evaluated separately; if any one SNQ is found, the reexamination is ordered; EXCEPTED ART: the same prior art raised in a prior EPR or PTAB proceeding that was already considered does NOT raise an SNQ (res judicata-like effect); the Requester must identify why the same art raises a NEW question — a new combination or application is sufficient.

EPR is strategically preferable in specific circumstances: SCENARIO 1 — ONE-YEAR BAR HAS PASSED: IPR has a strict one-year time bar from service of the complaint; if the defendant was served more than one year ago, IPR is barred; EPR has NO time bar — available at any time throughout the patent's life; a defendant who missed the IPR window can use EPR to still challenge the patent without estoppel consequences; SCENARIO 2 — AVOID ESTOPPEL RISK: IPR § 315(e)(2) estoppel: after FWD, petitioner estopped from raising in district court any ground raised or 'reasonably could have raised' in the petition; for a weak IPR petition (not enough confidence to present a compelling petition), EPR risks less — no statutory estoppel if the EPR results in maintained claims; SCENARIO 3 — ANONYMITY DESIRED: EPR allows anonymous filing through counsel without RPI disclosure; IPR requires identifying real parties in interest (which may trigger other IPR time bars for the true funder); SCENARIO 4 — BUILDING RECORD FOR CLAIM AMENDMENTS: EPR allows patent owners to amend claims (narrowing amendments) in ways that IPR severely limits; for a patent owner who wants to strengthen or clarify claims, a self-filed EPR can be useful; SCENARIO 5 — COST CONSTRAINTS: EPR is substantially cheaper than IPR; for smaller companies or low-stakes situations, EPR may be sufficient; SCENARIO 6 — COMBINED STRATEGY (EPR + DISTRICT COURT): because EPR does not create estoppel, a defendant can challenge the patent in EPR while simultaneously maintaining invalidity defenses in district court on the same grounds; WHEN IPR IS BETTER: within one year of complaint; need adversarial discovery; require faster FWD; have strong prior art that warrants IPR's higher cancellation rate; SETTLEMENT NOTE: a pending EPR can be a settlement leverage tool — patent owner will often want to settle the litigation to avoid the pending patent challenge.

EPR follows a specific procedural timeline with limited third-party participation: FILING THE REQUEST: the requestor files a request with the USPTO identifying: each claim to be reexamined; a statement of each SNQ; an explanation of how the prior art raises the SNQ; claim charts (prior art mapped to claim elements); copies of the prior art references; optional: identification of requestor (or anonymous); INITIAL EXAMINATION (1-3 months): CRU examiner reviews the request; issues ORDER GRANTING REEXAMINATION (if SNQ found) or denial; ~90% of requests are granted; NON-FINAL OFFICE ACTION: if reexamination is ordered, examiner issues a non-final office action with rejections; PATENT OWNER RESPONSE: patent owner has 2 months (extendable to 6 months with fees) to respond; patent owner can: argue against the rejections; amend claims (narrowing only — no broadening during reexamination); add new dependent claims; submit declarations and affidavits (§ 1.132); REQUESTER'S ONE RESPONSE: after the patent owner's response, the requester may file ONE reply (within 2 months, extendable to 60 days); this is the last opportunity for requester participation; SUBSEQUENT PROSECUTION: reexamination continues between examiner and patent owner; appeals of examiner rejections: PTAB appeal (ex parte basis) → Federal Circuit; FINAL OUTCOME: REEXAMINATION CERTIFICATE: (1) all original claims confirmed: certificate confirming claims; (2) some claims amended: certificate with amended claim language; (3) claims canceled: certificate showing which claims are canceled; APPEAL RIGHTS: patent owner can appeal adverse decisions to PTAB then Federal Circuit; requester has NO appeal rights after the single reply opportunity (ex parte nature); DURATION: typically 18-24 months; can be shorter if no amendments are needed or longer for complex prosecution.

The ability to amend claims is both an advantage and risk of EPR: AMENDMENT AUTHORITY: a patent owner CAN amend claims during EPR; this is a significant advantage of EPR over district court litigation (where claims cannot be amended); WHAT IS PERMITTED: NARROWING AMENDMENTS: adding limitations to narrow claim scope; DEPENDENT CLAIMS: adding new dependent claims; REWRITING DEPENDENT AS INDEPENDENT: rewriting dependent claims in independent form; WHAT IS NOT PERMITTED: BROADENING AMENDMENTS: cannot broaden any claim beyond the original disclosure (§ 305); cannot add new matter (§ 132); CLAIM SUBSTITUTION: generally, an amended claim must be 'substantially identical in scope' unless there is a patentable distinction; DOCTRINE OF INTERVENING RIGHTS: § 307(b) incorporates § 252 (reissue intervening rights) for reexamination; ABSOLUTE INTERVENING RIGHTS: a third party who began practicing the claimed invention before the reexamination certificate date has an absolute right to continue that specific activity (even if it would infringe the amended claim); EQUITABLE INTERVENING RIGHTS: a court may allow a third party to continue broader activities (beyond what they were actually doing) if they had made substantial preparation to practice before the certificate date; PROSECUTION HISTORY ESTOPPEL: as with regular prosecution, narrowing amendments during EPR create prosecution history estoppel; claims narrowed to avoid prior art cannot later be expanded under the doctrine of equivalents to capture what was surrendered; STRATEGIC CONSIDERATION: a patent owner facing litigation may strategically use EPR to amend claims to specifically target the defendant's product — this is permissible as long as the amendments are narrowing (not broadening) and supported by the specification; however, intervening rights apply if the amendments are material changes.