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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

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?

Let’s start by looking at the market reaction by comparing the current, steady state filing rate compared to that before September 16, 2012. To avoid any skew caused by the surge of filings made in the weeks before September 16th to avoid the price increase, I chose January 2012 as an exemplary steady state month under the old system. Likewise, January 2013 is significantly distanced from the September 2012 surge to serve as a current, steady state reference point. (Click to Enlarge)

expAlthough month-to-month samples will vary somewhat, it seems the current filings have dropped roughly 50% from 2012 numbers. This drop is likely due to the combination of the price increase and/or availability of IPR for older patents; still even with the more robust IPR option, some challengers are still opting for the Patentee friendly proceeding.

Why would any current patent challenger opt for this seemingly antiquated and Patentee friendly option?

First, this proceeding is still the only anonymous mechanism that may be employed at the USPTO to challenge an issued patent. Anonymity can be important, especially when the relative financial strength of the challenger is dwarfed by the resources of a much more powerful competitor.

Second, in some cases, where the technology is simple, and the prior art substantial, the ex parte option will enable the challenge to move forward with a minimum of investment in attorney and USPTO fees. While IPR is certainly far superior to ex parte patent reexamination in terms of ability to participate and demonstrate unpatentability, the cost of such participation is not insubstantial. Indeed, where a minor amendment or expansion of prosecution history could benefit the challenger in terms of a non-infringement defense, ex part patent reexamination can still serve as a wise investment.

Finally, as the Central Reexamination Unit (CRU) works through their current docket, the lower filing rates of ex parte proceedings may lead to significantly enhanced processing speeds, perhaps even rivaling that of the PTAB in the years to come.

For these reasons, ex parte patent reexamination will continue to serve a supporting role in the post grant challenge arsenal.

2 Responses to “Is There Value To Ex Parte Patent Reexamination After the AIA?”

  1. Kurtis says:

    Lack of estoppel seems worth mentioning here…

  2. Kurtis,

    It is true that there is no statutory estoppel in ex part reexam. Yet, in my experience, the ability to reuse failed reexam arguments in a later proceeding is of little practical value. That is to say, when three examiners of the Central Reexamination Unit disregard your submitted art, the patent is effectively “laundered” in that regard.

    As to the “reasonably could have raised” component of statutory estoppel, while also not present in ex parte reexam, the stigma of the previous failed challenge is a fact that resonates with judges and juries. What I am seeing is small companies clinging to ex parte reexam for cost reasons. Larger organizations will employ it occasionally in combination with other litigation/post grant strategies, but for time sensitive or pressing business concerns, inter partes challenges are the clear choice.
    Scott