Ex Parte Reexamination

Patent Ex Parte Reexamination

Having problems with a patent that you believe is invalid? Know about uncited prior art? Consider filing a Patent Ex Parte Reexamination request.

In the US, there are various legal methods to challenge the validity of issued patents. These legal methods vary greatly in expense and relative risk.

  • You can try to challenge a patent by a full Federal Court trial. Such trials are very expensive.  Indeed, patent litigation is frequently referred to as the “sport of kings”. Another problem is that you (the challenger) can’t be anonymous. So the possibility of “return fire” is high.
  • Alternatively, you can try to challenge a patent by an inter partes review (IPR) at the USPTO Patent Trial and Appeal Board (PTAB). The IPR process is essentially a streamlined mini-trial. IPR are relatively new (since 2013) and were established in an attempt to reduce the high costs of litigation. Indeed, IPR are about an order of magnitude cheaper than Federal Court litigation. This is still quite pricy for small firms, however, and again the challenger can not be anonymous.
  • You can also challenge a patent by filing a USPTO Ex Parte Reexamination request. This is the lowest budget approach. Reexaminations can cost an order of magnitude less than an IPR (and two orders of magnitude less than Federal Court litigation!) Ex Parte Reexaminations are thus in the price range for individual inventors and small startup companies. An additional advantage of this method is that you (the challenger) can be anonymous.  That is, if you file through an attorney, you need not give your identity, thus avoiding return fire.

At present, only about 200 Ex Parte Reexamination requests are filed each year. Given the low costs, and minimal risks, why isn’t this method used more often?  Probably because fewer arguments are allowed, and the challenger has less control over the process.

To file an Ex Parte Reexamination request, you (the challenger) need to identify some new and convincing printed prior art. Usually, this is one or more patents or other publications that were not previously cited. These new prior art references should be convincing enough to raise a Substantial New Question of Patentability (SNQ). Here, only two issues can be raised. These are anticipation (35 USC 102 – one new reference is enough); or obviousness (35 USC 103 – usually based on two or more new references).

To initiate the challenge, you need to fill out a USPTO form (PTO/SB/57) with the relevant information, and further include a detailed request providing further explanation. The explanation shows how the various limitations in the challenged claims correspond to the various prior art references. Claim charts can be used, but are not required. This explanation is a bit like a USPTO office action.

The challenger submits the form and detailed request to the USPTO along with other required papers, and the required reexamination fee (presently $3,000 for a small entity). The challenger (or the attorney) must also serve a copy of this request to the owner of the challenged patent, and provide proof of service to the USPTO as well.

The USPTO will review the request. If it complies with the USPTO standards, they will inform the patent owner that their patent is now being reexamined.

The main drawback/feature of the Ex Parte Reexamination process is that after the request is submitted, you (as challenger) have no further input. This is good in that it reduces costs, but bad in that it also limits your control.

Once reexamination is initiated, the USPTO patent examiner reopens examination by issuing new rejections, which the patent owner is expected to rebut.  Sometimes this works, sometimes it does not. If your new citations are not convincing enough, the reexamined patent may issue again, either with the same claims or more limited claims.

Still, if you want to try to knock out a troublesome issued patent, know about some juicy but uncited prior art, and are on a budget, consider the Ex Parte Reexamination option.