Ex parte reexamination

The most commonly used patent reexamination procedure before the USPTO was instituted in 1980-1981. This procedure is referred to as the ex parte reexamination procedure, and its basic framework is outlined in the patent laws 35 U.S.C. 301—307.55 Some key features of the patent laws regarding ex parte patent reexamination are as follows ... 

Any person at any time (during the enforceable life of the patent) may file a request for the reexamination of a U.S. patent.56 This includes other parties, the patentee or even the USPTO itself, although most ex parte reexamination requests are filed by other parties. Reexamination requests filed by parties other... 

The term ex parte is Latin legalese for on one side only (Black s Law Dictionary, 6th ed.). In the context of this discussion, it means that the actual reexamination process, once begun, is conducted between the patent holder and the USPTO only. This is in contrast to the inter partes proceeding that to a much greater extent involves the party requesting the reexamination as well as the holder of the patent and the USPTO. While an ex parte reexamination can be initiated by the patent holder, an inter partes action cannot since there would be no other party to occupy the other side. The ex parte reexamination procedure is described in detail in Chapter 2200 of the MPEP. 

The real party of interest behind the request for the reexamination may remain anonymous throughout the ex parte reexamination process.57... 

Any final action unfavorable to the patentee by the patent examiner may be appealed by the patent holder to the Board. Further appeal by the patent holder to the Court of Appeals of the Federal Circuit is possible (35 U.S.C. 141-147). The right of appeal in the ex parte reexamination proceeding is limited to the patent holder and not the reexamination requestor.60... 

Since 1981, there have been >9000 requests for ex parte patent reexaminations with >500 per year in recent years. The patent office has granted over 90% of the reexamination requests made to it, with approximately 75% of the reexamined patents being at least partially modified if not completely revoked. While this cannot be taken as statistical reflection of all patents issued by theUSPTO, since the challenged patents are a selected group to begin with it does provide those wishing to challenge issued patents by an ex parte reexamination at least some reason to be optimistic.61... 

Inter partes patent reexamination proceedings were added to the federal patent laws in 1999, and although significantly lagging the number ex parte reexamination requests, the growth rate in applications is impressive (Figure 2.14). 

FIGURE 2.14 Ex partes and inter partes reexamination requests by year. 

---