News & Analysis as of

Ex Parte

Cooley LLP

New Ex Parte Reexamination Procedure at USPTO: What Patent Owners and Challengers Need to Know

Cooley LLP on

Under 35 USC § 303(a), the US Patent and Trademark Office (USPTO) must determine within three months of the filing of a reexamination request whether the request raises a substantial new question of patentability....more

McDermott Will & Schulte

How ex parte is ex parte reexam?

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

Morgan Lewis

USPTO Introduces Pre-Order Patent Owner Submission in Ex Parte Reexaminations

Morgan Lewis on

Ex parte reexamination proceedings now have a new twist: patent owners will have the option to file a pre-order paper before the Office determines whether a substantial new question of patentability (SNQ) has been raised....more

K&L Gates LLP

USPTO Introduces Patent Owner Pre Order Submission on SNQ in Ex Parte Reexam

K&L Gates LLP on

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

Wolf, Greenfield & Sacks, P.C.

USPTO Issues Updated Guidance on Patent Reexamination Practice

On April 1, 2026, the USPTO issued new guidance establishing a “Pre-Order Procedure Regarding Substantial New Question Determination in Ex Parte Reexamination Proceedings,” signaling further changes to the agency’s...more

Fish & Richardson

USPTO to Allow Pre-Order Patent Owner Responses in Reexaminations

Fish & Richardson on

The U.S. Patent and Trademark Office (USPTO) is instituting a new process in ex parte reexamination (EPRx) proceedings that will permit a patent owner to submit a pre-order paper to dispute the existence of a substantial new...more

Stradling Yocca Carlson & Rauth

30 Days, 30 Pages: USPTO's New Pre-Order Procedure Changes the Ex Parte Reexamination Calculus

The USPTO has announced a new pre-order procedure that, for the first time, gives patent owners a formal opportunity to weigh in before the Office decides whether to order ex parte reexamination. Signed by Director John A....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reissue, Reexamination, and Supplemental Examination Strategies and Insights – March 2026

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Under the Hood: Leveraging Anonymous Ex Parte Reexamination

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

Kilpatrick

Recent Decisions Clarifying Restrictions For Service of Process Under the Hague Convention

Kilpatrick on

In Smart Study C. Ltd, v. Shenzhenshixindajixieyouxiangongsi, 164 F. 4th 164 (2d Cir. 2025), the Second Circuit affirmed the dismissal of trademark infringement claims against China-based defendants, holding that service by...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reissue, Reexamination, and Supplemental Examination Strategies and Insights – February 2026

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2025 PTAB Year in Review Analysis & Trends | 6TH EDITION

In 2025, the Patent Trial and Appeal Board (PTAB) experienced significant procedural and substantive changes. Under new leadership at the U.S. Patent and Trademark Office (USPTO), a series of developments reshaped...more

MoFo Tech

AI Trends For 2026 - A Golden Age for AI Technology Patents at the USPTO

MoFo Tech on

The U.S. Patent and Trademark Office (USPTO) under new Director John Squires has been focused on spurring AI technology growth, with the USPTO in 2025 pushing a sweeping policy agenda designed to promote patentability of...more

Ervin Cohen & Jessup LLP

When Does the Time to Appeal Run for an Order Appointing a Receiver?

Q:      I was appointed receiver based on an ex parte motion. The court subsequently confirmed my appointment. The defendant vigorously opposed my appointment and has threatened to appeal. ...more

McDonald Hopkins

The recent expansion of patent eligibility for AI inventions before the USPTO

McDonald Hopkins on

The new United States Patent and Trademark Office (USPTO) Director John A. Squires was sworn in on September 22, 2025 and wasted no time that week in expanding patent eligibility for AI related inventions. ...more

Fish & Richardson

PTAB Reverses § 101 Rejection Under Desjardins Framework

Fish & Richardson on

The Patent Trial and Appeal Board (PTAB) has issued a decision in an ex parte appeal reversing an examiner’s final rejection under 35 U.S.C. § 101 of claims directed to artificial intelligence (AI) based business methods. Ex...more

WilmerHale

Federal Circuit Patent Watch: No § 315(e)(1) Estoppel for Ongoing Ex Parte Reexaminations

WilmerHale on

DUKE UNIVERSITY, ALLERGAN SALES, LLC v. SANDOZ INC. [OPINION] (2024-2078, 11/18/2025) (Dyk, Stoll, Stark) - Stark, J. The Federal Circuit found a patent claim invalid because the patent lacked written description support...more

Kohrman Jackson & Krantz LLP

Schedule A Lawsuits: What You Need to Know

Over the last decade, Schedule A lawsuits have become a central enforcement mechanism for brand owners seeking to combat the surge of online counterfeiting and infringement. These cases—most commonly filed in the Northern...more

Baker Botts L.L.P.

Director Squires Designates Ex Parte Desjardins Decision as Precedential

Baker Botts L.L.P. on

On November 4, 2025, Director of the U.S. Patent and Trademark Office, John Squires, designated the Ex Parte Desjardins decision of September 26, 2025 as “precedential.”...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Part II: Does Your Patent Office Post-Grant Strategy Account for the Rise of Serial Challenges Flowing From the PTAB to the CRU?

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

Morrison & Foerster LLP

USPTO Director Signals Support for AI Patent Eligibility

Just days after John A. Squires was sworn in as the 60th Director of the U.S. Patent and Trademark Office (USPTO) on September 23, 2025, he convened the rarely used Appeals Review Panel (ARP) and issued a decision in Ex parte...more

Miller Johnson

NDIL Shreds the “Schedule A” Playbook: Specificity Required 

Miller Johnson on

Eicher Motors Limited v. Partnerships & Unincorporated Ass’ns Identified on Schedule “A”, No. 25cv02937 (N.D. Ill. Aug. 8, 2025) - For years, the Northern District of Illinois has served as the hub for “Schedule A”...more

Ballard Spahr LLP

FTC takes action against Accelerated Debt for running a debt relief scam

Ballard Spahr LLP on

An ex parte temporary restraining order has been issued against the participants in a debt relief services scheme that allegedly targeted seniors, including veterans, using a variety of deceptive practices, including falsely...more

Carey Olsen

Bermuda Court confirms personal right of action of company directors to end wrongful exclusion

Carey Olsen on

In two notable recent judgments, the Bermuda Supreme Court ruled that a director of a Bermuda company was entitled to an interim injunction prohibiting the company and its other directors from improperly excluding him from...more

Mintz - Intellectual Property Viewpoints

A Later-Filed, Later-Expiring Unrelated Patent is Not a Proper Reference Patent for an Obviousness-Type Double Patenting Rejection

The recent Patent Trial and Appeal Board (PTAB) decision Ex Parte Baurin reversed an Examiner rejection for obviousness-type double patenting (ODP) in U.S. Application No. 17/135,529 over the later-filed, later-expiring...more

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