What is an ex parte (1-sided) patent reexamination request?
If you have hundreds of thousands of dollars to fight a patent (e.g., $300,000+), you can pursue litigation-like options such as Post Grant Review (PGR) or Inter Partes Review (IPR). If not, an ex parte reexamination request might arguably be one of the most affordable ways to challenge a patent. “Ex parte” means one-sided, so the requestor does not get to participate in the patent reexamination proceedings beyond the initial stages of the process. An ex parte reexamination request requires that you make your best arguments upfront and then leave the rest to the Patent Office.
Keep in mind that reexamination applies only to granted patents, and not pending applications. Options to block or otherwise frustrate a pending patent application may include patent protests and pre-issuance submissions.
What are the requirements for a reexamination request?
A request for reexamination must include:
- a statement pointing out each substantial new question of patentability based on prior patents and printed publications;
- an identification of each claim being challenged, and detailed explanations of relevance of prior art applied to each claim for which reexamination is requested;
- a copy of every patent or printed publication relied upon, including an English translation of all necessary and pertinent parts of any patent or printed publication in a foreign language;
- a copy of the entire patent for which reexamination is requested;
- a certification that a copy of the reexamination request has been served on the patent owner (if the requestor is not the patent owner); and
- a certification by the third party requestor that it is not estopped from making the reexamination request (e.g., prior litigation).
Payment of the USPTO fee can be delayed.
What kinds of prior art evidence may be used to request reexamination of a patent?
Note that the eligible evidence must consist of prior patents and printed publications. In other words, only documentary evidence of prior art may be used. Other types of evidence, such as prior sales or existing products in the marketplace, will not be eligible unless you can produce such evidence in the form of a printed publication.
How much does 1-sided patent reexamination cost?
The cost of the reexamination request consists of two factors:
- attorney’s fees; and
- USPTO fees.
At our firm, attorney’s fees for a reexamination request typically start at $15,000. Depending upon the number of claims and amount of prior art references, attorney’s fees will vary. Our firm can provide a flat fee estimate for a reexamination request once we know the patent number and the quantity of prior art references.
USPTO reexamination fees will depend upon the size of the requestor (whether large, small or micro entity), and the number of pages of the request. A 50% discount applies to streamlined reexamination requests which must be under 40 pages.
Assuming your company is a small entity with fewer than 500 employees, the USPTO fee will be either $6,300 for the non-streamlined request or $3,150 for the streamlined request. A micro entity gets a further 50% reduction off these USPTO small entity fees. If the patent has a decent number of claims to be challenged (e.g., at least 10) and you have more than a couple of prior art references, you might want to pursue the non-streamlined option. It would be penny-wise and pound-foolish to save a few dollars by using a shorter brief that ultimately fails to convince the USPTO to order reexamination.
What is the patent reexamination process?
Here is a brief timeline of the patent reexamination process:
- Requestor files ex parte reexamination request and serves copy on patent owner
- Within 3 months of reexam request filing date, USPTO will determine whether a substantial new question of patentability has been raised. If so, a decision ordering reexamination will be sent.
- Within 2 months of decision ordering reexamination, patent owner may file an optional Patent Owner’s Statement with any narrowing claim amendments.
- Within 2 months of Patent Owner’s Statement, requestor may file an optional reply.
- If no Patent Owner’s Statement, examiner will begin examination and issue an Office Action (e.g., 4 to 6 months from institution date).
- Patent Owner will have an extendable 2-month deadline to respond to Office Actions
- Ongoing prosecution may lead to Final Office Action which may be addressed with limited options, or appealed to the PTAB or court
- Conclusion of reexamination proceeding leads to notice of intent to issue with examiner’s reasons for each claim found patentable
- USPTO issues Ex Parte Reexamination Certificate
Can the reexamination requestor remain anonymous?
Yes, the requestor can remain anonymous by using a patent attorney to file the reexamination request.
What is the probability of a request for reexamination being granted?
According to USPTO reexamination statistics, over 92% of all ex parte reexamination requests since 1981 have been granted.
Of all reexaminations requested by third parties, the results have been:
- over 64% chance of claims changed;
- over 14% chance of all claims canceled;
- over 20% chance of all claims confirmed.
So a granted reexamination by a third-party requestor has a roughly 79% chance of claims being changed or canceled. If we define success as the probability of a granted request multiplied by the probability of claims being changed or canceled (92% x 79%), then the result is a 73% probability of success for third party requestors.
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