To protect your intellectual property, you should be regularly checking up on what is being copyrighted, trademarked, etc., while you own your IP. This way, you make sure nothing is infringing on your IP. But what should you do if you believe something is? You can’t always trust the United States Patent and Trademark Office (USPTO) to deny every IP protection that seems similar to yours. You need to be proactive. To do this, you can file for an ex-parte reexamination.

If you’re not sure what this is and how it works, contact the attorneys at Emerson Thomson Bennett for help.

What is an Ex Parte Reexamination?

An ex parte reexamination is a process in which patent claims are evaluated by the USPTO. It’s used when someone believes that one or more parts of a patent should be modified, amended, or canceled altogether. This process is done without involving the patent holder, hence why it’s called an ex parte reexamination. 

When Can You File for a Reexamination?

Ex parte reexamination is used in patent law when someone, often a third party, believes that a granted patent should not have been issued due to the existence of prior art that invalidates the patent’s claims. This process involves submitting a request to the USPTO to reexamine the claims in the patent with the newly presented prior art in mind.

A person or company could use an ex parte reexamination in several situations:

  • Competitive Business Reasons: If a competitor has been granted a patent that you believe is invalid, you can request an ex parte reexamination. This would prevent them from using the patent against you or others in your industry.
  • Legal Strategy: If you’re involved in a patent infringement lawsuit, requesting an ex parte reexamination could be a strategic move. If the USPTO agrees to reexamine the patent and ultimately finds it invalid, the lawsuit may be dismissed.
  • Due Diligence: If you’re considering purchasing a patent or a company that owns patents you’d receive, you can check if the patents are valid before proceeding with the transaction. In this case, you can request an ex parte reexamination as part of your due diligence process from the seller.

Remember, the ex parte reexamination process is complex and can have significant legal and business implications. It’s always recommended to consult with a patent attorney or professional before proceeding with a reexamination request.

The Benefits of Ex Parte Reexaminations

The primary benefit of an ex parte reexamination is that it can save you time and money in the long run, especially if it successfully stops a patent from infringing upon yours. The USPTO can grant or deny applications much faster than a lawsuit would take to resolve. This makes the process more cost-effective because the parties involved will not have to pay the costs associated with litigation.

In addition, an ex parte reexamination could lead to a better outcome than litigation. The USPTO is more objective in its assessment of patent claims and may be able to come up with a resolution that’s fair for both sides. This could result in amendments or cancellations that cause less upheaval and issues than a lawsuit. 

The Drawbacks of Ex Parte Reexaminations

However, one of the drawbacks of an ex parte reexamination is that you don’t have the same opportunities to make your argument. Whether or not you’re successful completely depends on the abilities of the USPTO representative overlooking your case. You are not a large part of the process. 

If the USPTO denies or dismisses applications without making any changes to patent claims, you may have to file a lawsuit down the line.

Another potential downside of a reexamination is that it is not confidential. The USPTO typically publishes applications and decisions related to patent claims, which means that any amendments or cancellations could become public knowledge. This could potentially lead to competitors gaining access to valuable information about your patents or the ones you are interested in, which can put you at a disadvantage in the marketplace or make you lose your advantage. 

Contact the Attorneys at Emerson Thomson Bennett for Help

It’s essential to consider both the benefits and drawbacks of an ex parte reexamination before proceeding. It can be a valuable tool for addressing patent disputes quickly and cost-effectively, but there are some potential risks involved as well. You can make sure that you understand all the possible outcomes with the help of an attorney. Then you can decide if this is the right option for your situation.

Understanding the basics of a reexamination can help you decide whether it’s right for your situation. With this knowledge, you can make a better-informed decision as to whether to proceed with a reexamination or seek other resolutions to patent disputes. Contact the attorneys at Emerson Thomson Bennett for the legal advice you need.



We provide complete intellectual property representation to business owners, inventors and artists in all matters related to the establishment and protection of domestic and international patents, trademarks and copyrights. Attorneys at our firm also serve as in-house IP counsel for companies whose needs do not call for a full-time internal position.


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