Ex Parte Reexamination Requests: What Experienced Practitioners Watch For Before Filing

DEREK FAHEY, ESQ.

Overview

Ex parte reexamination is often viewed as a cost-efficient alternative to inter partes review. But the USPTO will not reach the merits unless the request clearly establishes a substantial new question of patentability, or SNQ. If the request does not carry that burden at filing, the proceeding does not open.

1. The SNQ Requirement and Common Failure Points

Reexamination can be denied without substantive review of patentability. The Office first asks whether the request raises a substantial new question relative to what was previously considered. A recurring defect is treating the SNQ as a conclusion rather than demonstrating precisely where and how a new reference or combination materially affects examination.

Strong requests can also fail procedurally. Each challenged claim must be identified, each substantial new question must be articulated in the preferred format, required references must be supplied, the fee must be paid, and the patent owner must be served. A request may be denied even where the art is potentially strong if the petition does not clearly state and explain each SNQ.

2. Drafting Discipline: Charts, References, and Rationale

Element-by-element claim charts with pinpoint citations are central. Generalized descriptions and block quotations may obscure the showing. The chart should allow a reviewer to locate quickly where each limitation is disclosed.

Including every conceivable reference can dilute the request. A smaller number of carefully selected references, each with a defined role, is often more effective. When a combination is relied upon, the rationale should be concrete, evidence-based, and tied to recognized obviousness frameworks rather than a generic statement that the references could be combined.

3. Strategic Framing

The objective at filing is to open the proceeding, not to litigate every merits issue. Effective requests lead with the SNQ and support it with precise mapping and focused evidence. Ex parte reexamination can be especially useful where strong printed publications exist and avoiding estoppel is important.

4. Timing

Timing matters, particularly where parallel district-court litigation and a motion to stay may depend on whether reexamination is instituted. Procedural defects that delay or prevent institution can therefore carry significant strategic cost.

Conclusion

Many denials are driven not by weak prior art but by imprecise drafting, failure to articulate the SNQ, failure to distinguish the prior record, or failure to map the claims clearly. Treating the request as a disciplined, front-loaded submission materially improves the likelihood of institution.