Volume 47, Issue 4
Ex Parte Reexamination as a Valuable Option for Challenging Patent Claims
October 2016 -
Compared to citation of prior art, requesting an EPX not only can get the United States Patent and Trademark Office (PTO) to actually force the patent owner to re-prosecute the claims, but it also may effectively allow the requestor to draft the PTO’s rejections,
because an examiner is likely to copy any well-drafted arguments into the PTO-issued rejection
. Compared to IPRs, EPXs tend to be
substantially cheaper
—often by orders of magnitude2. Additionally, unlike an IPR petitioner,
an EPX requestor can remain anonymous
, and
need not worry as much about creating estoppel for other challenges should the EPX not succeed
. Moreover, an EPX may be available when an IPR is not, for example
when the third party has already sought a declaratory judgement challenging a claim’s validity, or when more than a year has passed since the third party has been served with an infringement complaint
. In an EPX, unlike in a court proceeding,
claims are given their broadest reasonable interpretation
and are
examined without a presumption of validity
. Furthermore,
court decisions are not necessarily binding on EPX outcomes
. For instance, after a court finds claims not invalid, even if final, the
PTO may still find the claims unpatentable in EPX
. Therefore, an EPX can be an attractive option not only before pursuing other avenues, but also after litigation. Given the advantages of EPX, it is surprising that the annual number of requests has remained so low. Nevertheless, those parties that do resort to an EPX seem to challenge patents that are valuable, which parallels a similar correlation found for litigated patents.3 As an example, we calculated various forward citation metrics, which are assumed to be indicative of patent value,4 and compared them across patents that were not subject to EPX, those that received only one EPX request, those that received at least one EPX request, and those that received two or more EPX requests. As the following table shows, patents receiving at least one EPX request seemed to be more valuable than those with no such requests, and patents receiving more than one EPX request seemed to be more valuable than those with a single EPX request. Overall, these statistics support the argument that third parties who are considering a trial-type challenge to a patent should consider EPX, at least as a preliminary step for weakening the claims,5 similarly attractive.
Table – Statistics for patents receiving EPX requests6
< Previous Article
Table of Contents
Next Article >
2016 Ⓒ Boston Patent Law Association
Third parties who discover a prior art patent or publication that destroys novelty or non-obviousness of a target patent’s claims have a number of options. Their main four options are to
cite the reference to the PTO
request an
ex parte
petition for an
inter partes
(IPR), and/or rely on litigation.1 Requesting an
ex parte
reexamination has certain advantages that are likely overlooked in view of the fact that the number of requests per year has
consistently remained in triple digits
, while the number of petitions per year for the significantly more expensive IPR have
typically reached four digits
Community Calendar
Read more >
Table of Contents
President's Message by Erik Belt
Read more >
BPLA Submitted
Brief in Design Case of the Century
Read more >
< Back
Message from the Editor-in-Chief
Read more >
The Defend Trade Secrets Act: Examining the DTSA’s Language, Use, and Future
Read more >
Read more >
RESTORING THE PATENT SYSTEM: Countering Supreme Court Attacks on What Can Be Patented
Read more >
IPR Motions to Amend: Rays of Hope for Patent Owners Despite Gloomy Statistics
Read more >
Nominations for the BPLA Officers and Board of Governors for 2016-2017
Read more >
In re Aqua Products
: Claim Amendments During
Inter Partes
Read more >
Proposed Membership By-Law Change
Read more >
The 2016
Invented Here!
Read more >
2015 BPLA Annual Meeting Minutes
Read more >
Ex Parte
Reexamination as a Valuable Option for Challenging Patent Claims
Read more >
PTAB Bar Asssociation
Read more >
McRO v. Bandai
: Latest Federal Circuit § 101 Decision Breathes New Life into Software Patents
Read more >
Members on the Move
Read more >