Terms and Concepts

Ex Parte Reexamination

Ex parte reexamination can be requested by a patent owner or any third party requester at any time during the enforceability of a patent [35 U.S.C. § 302; 37 C.F.R. § 1.510].  Subsequent requests for ex parte reexamination by a third party requester are permitted, provided the prior art raising the new SNQ is not cumulative to prior art previously considered.  Co-pending reexamination proceedings may also be merged [37 C.F.R. § 1.565].  The patent owner is not permitted to broaden the scope of claims during ex parte reexamination [37 C.F.R. § 1.552(b)].  A third party requester can petition the PTO Director to review a determination refusing ex parte reexamination [37 C.F.R. § 1.515(c)].  The director’s decision on the petition is non-appealable, but can be challenged via a district court action.

In response to a grant of ex parte reexamination, the patent owner is entitled to file a statement on the new question of patentability, including any proposed amendments the patent owner wishes to make [37 C.F.R. § 1.530].  Where the ex parte reexamination was requested by a third party, the third party is entitled to respond to the patent owner’s statement [37 C.F.R. § 1.535].  This may be one reason why patent owners rarely submit a statement prior to receipt of an Office action. 

The patent owner is entitled to appeal to the BPAI and to the Federal Circuit with respect to any decision adverse to the patentability of any original, proposed amended, or new claim of the patent [35 U.S.C. § 306].