Ex parte reexamination requests increased exponentially in 2021. With a lower legal standard for institution and no requirement to identify the real party in interest, ex parte reexamination may be used as an alternative to inter partes review (IPR) or post grant review (PGR) and are increasingly being used as a second bite of the apple after denial of other post grant proceedings. Ex parte reexamination is available when a prior art patent or printed publication creates a substantial new question of patentability as to one or more claims in a patent. The patent owner, a third party, or sometimes the USPTO itself may request the reexamination. Learn more about this proceeding including the required elements of a reexamination request.

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Related Content

• Ex Parte Reexamination Checklist
  Use this checklist for a quick reference on the procedures and rules for ex parte reexamination.

• Post-issuance Procedures for Challenging Patents: IPR, PGR, and CBM
  Review the fundamentals of post grant proceedings under the America Invents Act including the differences between these procedures, how to initiate and conduct the proceeding, and the impact of the proceeding on litigation including stays and estoppel.

• PTAB Trial Procedures in AIA Proceedings
  Understand the key aspects of AIA proceedings including case timing and procedures from pre-institution through the final written decision, rehearings, appeal, and settlement.

• Patent Post-Issuance Modification Proceedings
  Consult this Practice Note for an overview of the various procedures available to modify a patent including certificate of correction, ex parte reexamination, reissue, disclaimer, and supplemental examination.

• Supplemental Examination Fundamentals
  Gain more insight into supplemental examination including what materials are submitted with supplemental examination requests and lessons for patent owners from supplemental examinations filed since this procedure was first introduced.

• Post-prosecution Patentability Proceedings
  Use this handy chart to quickly compare the different types of patent modification proceedings including PGR, IPR, Covered Business Method (CBM), Supplemental Examination, Ex Parte Reexamination, and Reissue.

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