Takeaways:

• A requester can have a voice in ex parte reexamination prosecution.
• Requesters should strategically structure their request documents to hedge against potential patent owner amendment and argument.

The key challenge of ex parte reexaminations has always been the lack of requester involvement after the reexamination request is granted. In order to reduce the impact of the requester’s silence during the proceeding, the requester needs to consider what might occur during prosecution that can be addressed in the originally filed request, declaration, and claim charts.

For example, the requester must consider what amendments might be made around the substantial new questions and prior art being submitted. Additionally, what a patent owner might argue during an Examiner interview needs to be considered. These considerations are especially warranted knowing about 80% of challenged patents emerge from reexamination based on amendment and argument, and only about 20% are completely invalidated.

But how does the requester best address future amendments and arguments in the original request papers?

One way of pre-addressing potential patent owner amendments and arguments is to provide a thorough technical tutorial providing a timeline of technical landmarks and supporting documents in the request documents. Such a tutorial may include prior art illustrating disclosed but unclaimed subject matter. This provides the Examiner an additional set of documents to use during prosecution that can address the patent owner amendments and arguments made through replies and interviews, thereby effectively limiting the patent owner’s options for distinguishing.

Another way of pre-addressing potential amendments and arguments is calling out alternative claim constructions or unclaimed embodiments, and suggesting how those constructions or embodiments are met by prior art documents. If claims are overly broad, but the embodiments have specific ways of implementing the inventions, a requester needs to consider those details when preparing a reexamination request.

The lack of page or word limits in reexamination requests allow a requester latitude to provide technical tutorials and to address prosecution potentials in an expert declaration or in the request itself.