Third Party Observation in Patent Prosecution in China
The United States Patent and Trademark Office quietly introduced a procedural change in April 2026 that fundamentally alters the power balance in patent reexamination....more
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
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
With the decline of inter partes review (IPR) proceedings and the significant increase in ex parte reexamination (EPR) proceedings, the U.S. Patent and Trademark Office (USPTO) is allowing EPR patent owners to submit a new...more
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
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
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
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
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
Last week, Judge Nusrat J. Choudhury (E.D.N.Y.) denied a motion to stay a patent case pending completion of ex parte reexamination (“EPR”) proceedings challenging the validity of some but not all of the patents-in-suit. ...more
On appeal from an ex parte reexamination (“EPR”) decision, the Federal Circuit held that a final written decision of an inter partes review (“IPR”) does not preclude the Patent Office from maintaining an ongoing EPR. ...more
In re Gesture, Case No. 25-1075 (Fed. Cir. Dec. 1, 2025) - Ex parte reexaminations and inter partes review (“IPR”) are two different procedures available at the United States Patent and Trademark Office (“PTO”) to...more
The Canadian patent system provides multiple post-grant administrative procedures that allow patentees and third parties to challenge or amend Canadian patents without requiring legal proceedings before the courts. While...more
As plant innovation moves into a new era—driven by climate adaptation, consumer preferences, and advanced breeding techniques—most attention on plant patents focuses on securing the initial grant. Yet, in rare instances,...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
Requesters should make sure to double cite to non-provisional and provisional if they require a provisional filing date for prior art....more
Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more
Takeaways: 1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings. 2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or...more
One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of...more
Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more
From time to time, a patent owner may become aware of an error in her patent. Some errors may be minor, and the patent owner may seek correction of minor errors via a USPTO Certificate of Correction (CoC). With a CoC, the...more
Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination...more