Ex Parte Reexamination

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BENEFITS OF EX PARTE REEXAMINATIONS

• Procedures Are Well Established And USPTO Personnel Trained.
  
• Applies To Any Patent That Is Still Enforceable.
  
• No Estoppel (Can Still Litigate Issues Decided in Ex Parte Reexamination).
  
• Can Be Filed Anonymously.

DISADVANTAGES OF EX PARTE REEXAMINATION

• Substantially No Participation by Requester.
  
• Less Of A Guarantee That the USPTO Won't Make The Same Mistake Twice.
  
• Requester Has No Appeal Rights, But Can Still Litigate The Issues Decided In Ex Parte Reexamination.
  

Director Initiated Reexamination

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BENEFITS OF DIRECTOR INITIATED REEXAMINATIONS

• Close Scruitiny By Senior PTO Staff Before Reexamination Is Ordered.
  
• Higher Likelihood Of A Rejection By The Examiner.
  
• Director Level Involvement Has A Greater Impact on Judges If Litigation Is Underway.
  
• An Appeals Court Will Know The Order for Reexamination is Not Frivolous.
  

DISADVANTAGES OF DIRECTOR INITIATED REEXAMINATION

• Ordered Only Rarely.
  
• Political Impact on Industry or Embarassment to USPTO Is Often a Perrequisite.
  
• Industry Outreach Initiative May Be Needed To Convince Director of USPTO That Action is Needed.
  
• Once ordered, Only the Patent Owner And The Examiner Can Participate.
  

Inter Partes Reexamination

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BENEFITS OF INTER PARTES REEXAMINATIONS

• Requester Can Participate In All Aspects Of Reexamination, Including Appeal.
• Three Month Statutory Deadline For USPTO To Respond to Requests For Inter Partes Reexamination.

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DISADVANTAGES OF INTER PARTES REEXAMINATION

• Available Only For Patents Issuing On An Application Filed On or After November 29, 1999.
• Must Identify The Real Party In Interest.
• Requester Is Estopped From Litigating Issues Addressed In Reexamination.
• Practice Is So New, USPTO Is Just Developing Procedures To Handle Inter Partes Reexamination.
• No Time Constraints On Actions After Order For Reexamination.