Reexams Get Fresh Look as PTAB Policies Add Uncertainty

The number of patent challengers seeking ex parte reexaminations has risen in recent years, a trend that may continue amid new USPTO policies and uncertainty about securing other types of patent review. Jason Eisenberg, chair of Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination practice, spoke to Law360 about these proceedings.

It will take months to see how new policies at the Patent Trial and Appeal Board (PTAB) will play out, but when related patent infringement litigation is in a fast-moving court and the defendant waited until the end of the one-year time limit to file a PTAB petition, the office has “given a lot of indication that that’s going to be a big criteria for a denial,” according to Eisenberg. “So it may be that some challengers choose to go straight to reexam and not pursue the PTAB proceedings.”

He also notes that the inability of the challenger to participate in a reexam is “A great benefit on the flip side to the patent owner,” who can meet with the examiner and potentially bring in inventors, litigation attorneys or experts to discuss how invalidity arguments can be overcome.

For patent owners, an advantage of reexam is that it is easier for patent owners to add and amend claims. As a result, Eisenberg adds, there are “a lot of avenues to get a patent back out of the reexamination proceedings that’s still enforceable and potentially infringed.”