Ex Parte Reexamination (EPR)

A patent owner, any third party, or the director of the USPTO may file the EPR request for reexamination of any claim of a patent. The patent owner may strategically use the EPR to bolster a patent or clarify any ambiguous claims. A third party (anonymously or openly) may file an EPR request, but may not participate during the examination process. The EPR is useful to minimize possible patent litigation costs, and to have a final determination regardless of the outcome. If the requester is a third party, the EPR may lead to an unfavorable outcome with at least 22% resulting in certificates with claims confirmed and with favorable outcome at least 78% resulting in certificates with claims canceled or amended (see above).

A request for the EPR must include the following parts:

(1) Statement pointing out each substantial new question of patentability based on prior patents and printed publications;

(2) Identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. For each statement of the patent owner and accompanying information submitted pursuant to § 1.501(a)(2) which is relied upon in the detailed explanation, the request must explain how that statement is being used to determine the proper meaning of a patent claim in connection with the prior art applied to that claim and how each relevant claim is being interpreted. If appropriate the party requesting reexamination may also point out how claims distinguish over cited prior art;

(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication;

(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper;

(5) If by a third party requester, a certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office along with an explanation; and

(6) A certification by the requester that the statutory estoppel provisions of 35 USC 315(e)(1) or 35 USC 325(e)(1) do not prohibit the requester from filing the EPR request.

Cardinal can help you with the following in preparing the request for the EPR:

• Monitor your competition and identify competitor patents as they issue
• Invalidity Search and Analysis on issued claims, identify most relevant art, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.
• In compliance with Regulatory and Statutory Requirements, assist in preparing EPR documents including:
  • Statement pointing out each substantial new question of patentability based on prior art and identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.
  • Document list identifying the publications being submitted
  • Legible copy of each identified documents (excluding U.S. patents/publications)
  • English language translations for foreign language references
• Confidential and Anonymous Third-Party EPR Submissions