To challenge an issued patent, companies are looking anew at ex parte reexamination in lieu of or as an alternative to post-grant proceedings.  One reason is a decline in the trial institution rate before the Patent Trial and Appeal Board (PTAB).  Another reason is that ex parte reexaminations are carried out before the Central Reexamination Unit of the USPTO and may be an order of magnitude less expensive than inter partes review proceedings.

However, one drawback is the limited participation permitted to the challenger, who effectively files the reexamination request and then exits the stage to passively await the outcome. The challenger cannot appeal the final decision, and may have to live with a strengthened patent that has survived the additional scrutiny. The patent owner, however, is not so constrained, and may respond to Office Actions, interview the examiner and appeal the decision much as he or she could in an ordinary patent application process.

The statutory “special dispatch” with which the reexamination procedure must be carried out mandates an economy in interview practice, including a prohibition on interviews before a first office action, and a special showing requirement for interviews after a final office action. Given the acknowledged value of examiner interviews, their timing and content must therefore be very judiciously chosen.

By Khaled Shami

References: 37 CFR 1.560  Interviews in ex parte reexamination proceedings.

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