Ex Parte Reexamination: The Patent Owner Strategy

For more than a decade, inter partes review (IPR) was the tool of choice for trying to invalidate a patent. That is changing. As the USPTO tightens the gate on IPRs, some challengers are turning to an older tool — ex parte reexamination — and patent owners are increasingly finding their patents under attack through a process that is fundamentally different from IPR proceedings and requires fundamentally different strategies.

Reexamination lives in the space between IPR proceedings and traditional prosecution. In this article, we discuss why some are pivoting from IPR proceedings to ex parte reexaminations, how reexamination differs from IPR through a litigation lens, what unique defensive options are available, and which strategies may give a patent owner the best chance of coming out ahead.