Tips For Avoiding Appeal in Ex Parte Patent Reexamination

Defendants in patent litigation suits often seek reexamination of the asserted patents in hopes that the United States Patent and Trademark Office (USPTO) will find the patents to be invalid, and therefore unenforceable. As a patent owner seeking to assert a patent, it is often critical that the patent proceed through reexamination unscathed and that the patent remain enforceable. It can also be desirable for the reexamination to proceed quickly, as the related litigation is often stayed pending the outcome of the reexamination. A quick reexamination can only be achieved when appeals are avoided.

Nutter recently prosecuted the ex parte reexamination of U.S. Patent Nos. 5,951,836, 6,241,862, and 5,708,247. While numerous grounds of rejection were asserted with respect to each patent, reexamination certificates maintaining the validity of the patents were issued in all three cases after only a single applicant response and without the need for expensive and