In a recent article published in Law360, Knobbe Martens lawyers Joshua Martineau and Jarom Kesler explore the U.S. Patent and Trademark Office (USPTO)’s latest guidance regarding ex parte reexamination (EPR) proceedings. On April 1, the USPTO announced a significant change to the EPR process, allowing patent owners to submit preorder papers to inform the office’s decision of whether to order EPR. This development, Martineau and Kesler maintain, “could be a boon for patent owners in EPRs, who previously had slim chances of avoiding reexamination.” (Historically, nearly 93% of all EPR requests have been granted.)
The authors outline the USPTO’s guidelines regarding preorder papers, which are limited to a narrow focus on the question of whether an EPR request introduces a substantial new question of patentability. They also offer suggestions for several types of arguments patent owners could pursue in preorder papers, with the aim of preventing EPR.
While the updated preorder paper procedure offers a novel opportunity for patent owners to prevent EPR, Martineau and Kesler note that there are potential drawbacks to this approach, such as the up-front cost of preparing the paper on short notice with no guarantee of success. “Viewed collectively, the benefits and drawbacks suggest that the preorder paper is best understood as a strategic, threshold-level intervention,” they write. “As a practical matter, the preorder paper is likely to be most valuable where an EPR request suffers from clear articulation gaps, aggressive claim constructions or incomplete combinations.”
Given that patent owners will be likely to use preorder papers to highlight vulnerabilities in EPR requests, third-party requesters should be prepared to submit high-quality requests that address potential arguments from patent owners.
Read the full article “New USPTO Procedure May Be A Boon For Patent Owners” here.
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