What’s in a Reexam — Two-Part Series: Part Two

MARK TERRY, ESQ.

Reexamination and post-grant proceedings allow issued patent claims to be reviewed against prior art or other patentability requirements. A patent owner may seek review to strengthen confidence in the patent, while a third party may use the process to challenge claims before or during an infringement dispute.

Ex parte reexamination limits the requester’s role after the proceeding begins, leaving most substantive communication between the patent owner and the USPTO. Inter partes review permits substantially greater participation by the challenger.

Post-grant review generally must be requested within nine months after a patent issues and may raise a broader range of patentability grounds. Inter partes review becomes available later and is generally focused on Sections 102 and 103 based on patents and printed publications.

Each procedure has its own evidentiary standard, filing deadline, estoppel effect, and relationship to district-court litigation. A petitioner must also coordinate the proceeding with any declaratory-judgment or infringement action.

The correct procedure depends on who is requesting review, when the patent issued, what grounds are available, and how the Patent Office proceeding fits the parties’ broader enforcement or defense strategy.