New Patent Owner Filings Expected To Drive Down Reexams

Alex Yap spoke with Law360 about the U.S. Patent and Trademark Office's new procedure allowing patent owners to respond to ex parte reexamination requests before institution. He noted that this change is expected to lower the historically high grant rate for reexams, as patent owners now have an opportunity to present arguments against institution, giving examiners more insight into potential deficiencies in challengers' positions. The article discusses how this policy shift follows recent USPTO actions that have limited America Invents Act reviews, resulting in increased reexamination requests and a strategic adjustment by both patent owners and challengers. Attorneys anticipate that patent owners will uniformly take advantage of the new opportunity, while challengers will strengthen their filings to anticipate patent owner responses.

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