Ex Parte Reexamination Lawyers

At PV Law LLP, based in Washington, D.C., our intellectual property lawyers can assist you with a wide range of patent concerns, including ex parte reexaminations. An ex parte reexamination is a procedure facilitated by the United States Patent and Trademark Office (USPTO) that enables any party to challenge the validity of a patent based on prior art patents and publications. This process is termed “ex parte” as it primarily involves the patent owner and the USPTO, with minimal involvement from the third party who initiated the reexamination once the process starts.

Our attorneys are well familiar with ex parte reexamination proceedings, having represented both patent owners and third-party challengers. We bring a wealth of knowledge and a diverse array of technical degrees – from engineering to molecular biology – along with valuable legal experience. With over a century of combined experience, we provide formidable IP strategies paired with cost-effective solutions. Serving a global clientele, we are equipped to assist you in English, Korean and Chinese.

Understanding An Ex Parte Reexamination

The process begins when a request is submitted to the USPTO by either the patent owner or any third party. This request must identify a substantial new question of patentability (SNQ) based on prior art that includes patents or printed publications. The Patent Owner may file a pre-order paper addressing the matters raised in the request within 30 days of being served with the request. The pre-order is paper is limited to 30 pages. The USPTO then reviews the request to determine if it indeed raises an SNQ. If such a question is identified, the USPTO orders reexamination.

Following a formal office action from the USPTO, the patent owner is given an opportunity to respond with amendments or arguments to address the issues raised by the reexamination request. A patent examiner conducts a thorough review of the patent in the context of the presented prior art and arguments. This phase may involve multiple rounds of communications, such as office actions and responses, between the patent examiner and the patent owner. After the examination is complete, the USPTO issues a certificate that confirms, amends or cancels the claims of the patent based on the findings from the reexamination.

The ex parte reexamination can be filed by anyone, including individuals, companies or even the patent owner themselves. If the requester is not the patent owner, they can choose to remain anonymous, which can be advantageous in certain competitive situations. The requester does not need to demonstrate any specific interest in the patent or prove potential infringement to initiate a reexamination.

What Is A Substantial New Question Of Patentability (SNQ)?

A Substantial New Question of Patentability (SNQ) is the threshold burden for requesting a patent reexamination. The SNQ must be a new issue not previously addressed by the USPTO when initially examining the relevant patent application or subsequent examination of the patent by the USPTO.

Frequently, an SNQ relates to new prior art or newer uses of old art. If a reasonable examiner would consider the prior art presented in the ex parte reexamination request  important in determining if the challenged claim is patentable, then an SNQ likely will be found and a reexamination of the issued patent ordered.

The Patent and Trademark Office Authorization Act of 2002 now allows an SNQ to be based solely on art previously cited or considered by the Patent Office provided that it is presented in a new light or different way compared with its use in earlier examination(s).

How Does An Ex Parte Reexamination Create “Intervening Rights” And Impact Potential Damages?

If a patent owner amends claims or adds new claims in response to an ex parte examination, it could create intervening rights and may limit or outright eliminate recovery of past damages pursuant to 35 U.S.C. 307(b). In other words, the modification of the original claims may allow those accused of infringing activities that took place prior to the amendments to dispose of articles covered by the new claims or in some circumstances continue manufacturing such articles where substantial preparation was made prior to the amendments.

Similarly, broad claims replaced by more narrow claims during reexamination may eliminate the right of the patent holder to seek damages for prior infringement based on the broader initial claims. Allegedly infringing parties may only face liability for acts after the date of the USPTO issuing the reexamination certificate. The reexamination certificate has the same legal implications as a reissued patent pursuant to 35 U.S.C. 252.

How Long Does An Ex Parte Reexamination Take?

The duration of an ex parte reexamination varies depending on the complexity of the patent and the issues raised during the reexamination process. The USPTO endeavors to conduct such proceedings with greater speed than the normal examination of patent applications. Typically, the process can take from a few months to a couple of years.

What Is The Difference Between Supplemental Examinations And Reexaminations?

Supplemental examination and ex parte reexamination are both procedures used to review patents after they have been issued, but they serve different purposes and follow distinct processes. Supplemental examination allows a patent owner to proactively address potential issues regarding a patent’s validity before any litigation claims by submitting additional information to the USPTO.

This process may cleanse any potential inequitable conduct associated with the patent. In contrast, ex parte reexamination can be triggered by anyone and is strictly focused on reevaluating the patent’s claims against new questions of patentability based on prior art publications.

How Can Our Ex Parte Reexamination Attorneys Help With Your Case?

Our team at PV Law includes experienced intellectual property attorneys familiar with the unique challenges of patent law, including the ex parte reexamination process. We can help third-party challengers and patent owners navigate an ex parte reexamination.

Our services can include:

• Pre-filing preparation: An evaluation of the original patent claim and potential prior art
• Validating eligibility: An assessment of whether the challenger meets the SNQ requirement
• Managing anonymous filings: Ensuring compliance with USPTO requirements for challenging a patent without revealing one’s identity
• Overseeing claim amendments: Supporting clients as they correct or further restrict patent claims
• Applying statutory knowledge and an analysis of prior art and SNQs to help protect intellectual property during USPTO reexamination proceedings

We can manage the entire process, from initial evaluation to preparing and filing a request or responding to Office Actions from the USPTO.

Work With Experienced Ex Parte Reexamination Lawyers

At PV Law LLP, we understand that navigating the complexities of patent validation and challenges can be daunting. With our sophisticated understanding of both the legal landscape and technical fields, we are exceptionally positioned to counsel you through your patent disputes. Whether you are engaging in an ex parte reexamination or navigating other aspects of PTO post-issuance proceedings, our experienced attorneys are here to ensure your innovations are thoroughly safeguarded.