FAQs: What companies need to know about ex parte reexamination

How can EPRs strengthen patents?

Ex parte reexamination is a strategic way for patentees to strengthen patents by asking the USPTO to re-review them against prior art. Successfully completing this process reinforces the presumption of validity, making the patents harder to challenge and more defensible in litigation. It also allows for claim amendments that clarify scope, reducing ambiguity and improving enforceability. A reexamined patent signals strength to competitors, deterring infringement and increasing confidence among potential licensees, which can enhance licensing value. In short, ex parte reexamination is an investment that reduces risk, supports litigation, and maximizes the commercial value of your intellectual property.

Why are EPRs considered as an offensive strategy to counter patent infringement accusations?

Challenging the validity of the asserted patent through new prior art creates uncertainty that weakens the accuser’s position. Courts often stay litigation during reexamination, buying time and reducing risk. If claims are canceled or narrowed, damages exposure drops, and leverage in settlement negotiations increases. Initiating reexamination shifts the balance, turning a defensive posture into a proactive competitive advantage.

What are the main differences between an EPR and an IPR?

EPR and IPR offer distinct strategic advantages in litigation. EPR is conducted by USPTO examiners and involves only the patent owner after the request is filed, making it useful for creating validity uncertainty and potentially delaying proceedings. IPR, on the other hand, is an adversarial process before the PTAB, with both parties actively participating in trial-like procedures. It must be filed within one year of an infringement complaint and can result in estoppel for the petitioner. IPR typically concludes within 12–18 months, while EPR often takes longer, influencing timing and leverage in disputes.