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.
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.