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Archive for February 14th, 2013

Is There Value To Ex Parte Patent Reexamination After the AIA?

Posted On: Feb. 14, 2013   By: Scott A. McKeown
ex parte reexamEx Parte Patent Reexamination Filings Fall by 50% After AIA

Prior to September 16, 2012, ex parte patent reexamination was the only USPTO option for challenging the validity of patents that issued from patent applications filed before November 29, 1999. This is because the inter partes patent reexamination statutes excluded those patents that issued from applications of the pre-1999 vintage. So, for those patent challengers hoping to take advantage of the lower cost USPTO proceeding as an alternative to patent litigation, ex parte patent reexamination was the only show in town— albeit, statistically speaking, a less than ideal option for patent challengers.

Further, ex parte patent reexamination provided the only manner by which a patent challenger could remain anonymous. This feature was especially important for those challengers hoping to test the mettle of an issued patent without inviting a retaliatory law suit from the Patentee.

Of course, the post grant patent world changed forever on September 16th 2012. On this date inter partes patent reexamination was discontinued in favor of the more robust Inter Partes Review (IPR) proceeding. Unlike its predecessor proceeding, IPR proceedings may be used to challenge any patent, regardless of vintage. In addition to this important expansion in inter partes applicability, the USPTO fee to request an ex parte patent reexamination soared from $2520 to $17,750.

So, with the availability of the more robust IPR option, and the attendant price increase to ex parte reexamination, is there still value in pursuing an ex parte patent reexamination proceeding?

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