Ex Parte Reexamination

MCG attorneys have handled more than 270 reexaminations in the last five years. Ex parte reexamination proceedings, which have unique rules and procedures, are an important option to consider when challenging the validity of a patent.

The ex parte reexamination process permits a third party or patent owner to request reexamination of a granted patent based on patents and printed publications. Such a reexamination can be filed at any time during the enforceability of a patent, which will be granted when the requester establishes a “substantial and new question of patentability” (SNQ). After meeting this burden, the USPTO will order reexamination of the challenged patent. Generally, ex parte reexamination proceedings involve the owner of the patent and the USPTO. In limited circumstances (e.g., a patentee’s rebuttal to the requester’s assertions of SNQ the requester may make a response to the statement. Thereafter, ex parte reexamination reopens prosecution, but takes place before a panel of three examiners as opposed to a single examiner. The owner of the patent can pursue an appeal of the final decision of the examination panel.

MCG attorneys have an educated and distinctive perspective on how best to utilize the reexamination proceeding as part of a comprehensive strategy for attacking a patent.