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Reexamination and Supplemental Examination

Sterne Kessler is the leading law firm for reexaminations at the USPTO, having handled more than 500 reexaminations over the last several decades.

Sterne Kessler is the leading law firm for reexamination, having handled over 500 reexaminations in the last several decades. Our success flows directly from the depth and breadth of our extraordinarily talented team handling these cases. Further, Sterne Kessler has been involved in several precedential decisions on reexamination procedures at the United States Court of Appeals for the Federal Circuit.

The Reexamination Process

Reexaminations can be filed by either a patent owner or third party requester. It is important to note that reexaminations are limited to prior art challenges. The Central Reexamination Unit (CRU) at the USPTO decides within three months whether to grant a reexamination request if the request demonstrates a substantial new question of patentability (SNQ). When filed by the patent owner, a request should include a proposed amendment that distinguishes the claims from the SNQ.

For third party requested reexaminations, once granted, the USPTO Examiners take approximately five months to issue an Office action. The five months allows a patent owner two months to submit an optional statement against a third party request. And the five months allows the Examiner about three additional months to determine if the request, without or without taking into account any patent owner statement, warrants an Office action or a Notice of Intent to Issue a Reexamination Certificate (NIRC) (i.e., Notice of Allowance) based on determining if the SNQ establishes a basis for rejection, or whether other prior art establishes a basis for rejection.

We have extensive experience guiding clients through this process.

Supplemental Examination

Supplemental Examination is a special proceeding enacted in the American Invents Act of 2012. It allows a patent owner the chance to cure inequitable conduct so long as the inequitable conduct has not been alleged in a civil proceeding. The CRU has three months to determine whether the conduct needs curing. If not, there was no inequitable conduct, and the CRU issues a notice stating the patent is free of problems. If there is a question about inequitable conduct, the CRU forwards the patent to the CRU to initiate a reexamination.

Please reach out to our team to discuss any questions related to the reexamination process and/or supplemental examination.

Representative Matters

  • Federal Circuit Appeal No. 13-1549: K/S HIMPP v. Hear-Wear Technologies, LLC – (Split precedential decision establishing what evidence is required in a request for reexamination to establish a substantial new question of patentability).
  • Federal Circuit Appeal No. 20-1992: In re: Vivint, Inc. – (Precedential decision establishing a minimum level of due process by the U.S. Patent and Trademark Office to determine whether a request for reexamination meets 35 U.S.C. 325(d) requirements to avoid presenting a substantially similar argument using substantially similar prior art teachings, which is a separate analysis from substantial new question of patentability).

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