Ex Parte versus Inter Partes Review
| Ex Parte Reexamination | IPR | |
| Requester | May be anonymously filed by any party, including patent owner | Must identify the real party in interest and can not be the patent owner |
| Applicable Patents | Any U.S. Patent still in force | Any U.S. Patents still in force and issued from an original application filed in the U.S. on or after November 29, 1999 |
| Estoppel | Does not apply | In a civil action, the requester and its privies can not argue invalidity of a claim finally determined to be valid or patentable on any ground which that party raised or could have raised during the inter partes reexamination |
| Decision on Request | The PTO has 3 months from the filing of a satisfactory request in which to decide whether the request raises a substantial new question of patentability | The PTO has 3 months from the filing of a satisfactory request in which to decide whether the request includes a showing that the requester is likely to prevail with respect to at least one of the challenged claims |
| Authority Adjudicating Request | Director of USPTO (decision made within 3 months) | Both patent owner and third party requester have participation rights throughout the proceeding, including appeal rights |
| Tribunal Adjudicating Substantive Review? | Central Reexamination Unit | Central Reexamination Unit |
| Final Action | Final Rejection - entry of an amendment or consideration of additional evidence is not a matter of right in a final rejection. Patent owner may appeal to the USPTO Board of Patent Appeals and Interferences (BPAI) | Action Closing Prosecution (ACP) – Patent owner may respond with argument and/or an evidentiary showing and/or amendments or may choose not to respond. Requester may file written comments directed only to the patent owner’s submission. After response period, the examiner will either re-open prosecution, or issue a Right of Appeal Notice (RAN) which sets time periods in which the parties may appeal to the BPAI. No amendments after an RAN |
| Appeal to the BPAI | Only patent owner may appeal. The appeal process is similar to that in a non-provisional patent application | Either party may appeal an adverse determination to the BPAI. Both parties participate in the appeal proceeding |
| Subsequent Court Appeals | Patent Owner may appeal the decision of the BPAI to the U.S. District Court for the District of Columbia (only if request is before 11/29/99), or to the Court of Appeals for the Federal Circuit | Either party who was a party to an appeal to the BPAI and is dissatisfied with the result may appeal to the Court of Appeals for the Federal Circuit |
| Subsequent Court Appeals | Patent Owner may appeal the decision of the BPAI to the U.S. District Court for the District of Columbia (only if request is before 11/29/99), or to the Court of Appeals for the Federal Circuit | Either party who was a party to an appeal to the BPAI and is dissatisfied with the result may appeal to the Court of Appeals for the Federal Circuit |
| Average Pendency (From filing to certificate issue) | 25.4 months | 35.0 months |
| Government Filing Fees | $2,520 | $8,800 |
| Average Cost | About $14,000 (source: AIPLA 2009 Economic Survey) |
About $114,000 (source: AIPLA 2009 Economic Survey) |
Reexamination Legal Proceedings
Contact RatnerPrestia
For more information about procedures and strategy for post grant reconsideration of U.S. patents, please contact RatnerPrestia.
+1-610-407-0700 www.ratnerprestia.com