Under a new procedure, announced in an Official Gazette Notice dated April 1, 2026, patent owners may now provide input before the United States Patent and Trademark Office decides whether to initiate an ex parte...more
In the April 1, 2026 edition of the Official Gazette, the U.S. Patent and Trademark Office announced a new procedural framework that permits patent owners to submit a limited, early response to a request for ex parte...more
In an Official Gazette notice dated 1 April 2026, the USPTO announced a new procedure allowing patent owners to submit a limited “pre order” paper addressing whether a third party ex parte reexamination request raises a...more
On April 1, 2026, USPTO Director John Squires issued an Official Gazette Notice establishing a new pre-order procedure effective for reexamination requests filed on or after April 5, 2026....more
Have you, your paralegal, your client, your expert, etc. used public generative artificial intelligence (“AI”) to perform research while preparing for a USPTO invalidity proceeding as a challenger or patent owner?...more
After issuing an April Fool’s Day press release announcing an imagined “AI-assisted evaluator for patent eligibility determinations,” the USPTO issued another press release on April 1, 2026, that stakeholders need to take...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners....more
In February’s Part I article (“First Strike“), we described how anonymous ex parte reexamination can function as an early-stage lever, used by potential defendants and other market participants to reduce assertion risk before...more
Unique to reexamination, the Rules and Manual of Patent Examination Procedure (MPEP) allow for the real requester of a reexamination to remain anonymous so long as their counsel provides proper certifications....more
When patent owners are challenged at the Central Reexamination Unit (CRU), it appears many approach the defense of their patent no differently from its original prosecution, which our prior articles demonstrate is an...more
As we continue to follow the changes to AIA proceedings at the Patent Trial and Appeal Board (PTAB), we are also tracking the evolution of post-grant challenge strategy at the Central Reexamination Unit (CRU)....more
In a March 2025 article, we provided strategy considerations for both parties handling ex parte reexaminations following denied inter partes reviews (IPRs) in view of the United States Patent and Trademark Office (USPTO)...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
Reissue applications represent a very small fraction of the total number of applications filed at the USPTO each year. Indeed, at the midpoint of 2025, over 1.2 million utility applications have been filed, with less than 300...more
After eight weeks of shifts in governmental policies, the patent bar is feeling repercussions from all directions. One critical area in flux is the post-grant challenge arena. With a reduced PTAB head count and a steady...more
Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more
Takeaways - - Expired patents may be eligible for reexamination. - Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination...more
Takeaways - - Pre-AIA patents may be able to “swear behind” prior art applied in reissue and reexamination. - “Swearing behind” has limits and obtaining sufficient evidence to establish prior invention may be difficult to...more