TAKEAWAY: Ex parte reexamination practice in the United States is experiencing a surge in popularity and may prove useful for patent owners and third-party requestors alike.
Inter partes review (IPR) and post-grant review (PGR) procedures have fundamentally changed litigation, licensing, and even patent drafting strategies. These changes have accelerated with recent guidance of the USPTO signaling an increasing involvement of the Director and broadened grounds for discretionary denial of IPR and PGR institution. But not everything is new. From the complicated quagmire of new procedures and guidance, an old relic is re-emerging: Ex parte reexaminations are resurfacing as a go-to alternative in the post grant landscape.
Why Ex Parte Reexaminations?
The modern reexamination of issued patents began all the way back in 1981. This procedure has long been a useful tool for third-parties seeking to challenge the validity of one or more claims in the patent by raising a “substantial new question” (SNQ) of patentability related to novelty or obviousness based on based on patents and other printed publications. Parties can file a reexamination at any time after a patent is granted and up to six years after it expires. This tool can be wielded by both patent owners and third-party requestors. For example, patent owners can use ex parte reexaminations to strengthen their patent claims while third-party requestors (often defendants in a patent infringement lawsuit) can use ex parte reexaminations to attack the validity of patent claims.
Back With A Vengeance
After growing in popularity through the 2000s, ex parte reexaminations began a period of decline in 2012 after the passage of the America Invents Act (AIA) and the accompanying rise of IPR and PGR practice. However, ex parte reexamination requests have increased dramatically since 2019, for a number of possible reasons that provide benefits for both sides.
For third-party requestors, a few of the benefits may include:
- Ex parte reexaminations can be used as a follow up procedure for petitioners who were unsuccessful in IPR proceedings.
- A very high grant rate for ex parte reexaminations provides a low entry bar.
- Ex parte reexaminations avoid estoppel in IPR and PGR proceedings while still allowing for a USPTO invalidity challenge.
- There are no page limits or time limits for filing a reexamination request.
For patent owners, a few of the benefits may include:
- Ex parte reexaminations allow for broad amendment of claims that may be more difficult and unpredictable to implement in IPR and PGR proceedings, given the participation of the opposing parties.
- Patent owners may be able to add additional claims that are strategically directed at allegedly infringing products.
- By strengthening patent claims through ex parte reexamination, patent owners can prepare for invalidity challenges in AIA, district court, or U.S. International Trade Commission (ITC) trials.
Proceed With Caution
While ex parte reexaminations may provide unique benefits over IPRs and PGRs, the dependability and full range of benefits offered by ex parte reexamination may also change with time. For example, In re Vivint, 14 F.4th 1342 (Fed. Cir. 2021) discussed the relationship between the SNQ standard and previous IPR challenges, and signaled that an ex parte reexamination may not always be allowed as a do-over of a failed IPR. Thus, ex parte reexaminations must be considered on a case-by-case basis, with full consideration of other post-grant strategies.