Back to the Future: Patent Reexamination as a PTAB Alternative

This CLE webinar will guide patent counsel on the use of patent reexamination as a better post-grant option. The panel will discuss the pros and cons of reexamination as well as considerations to weigh before going down this path.

Patent litigation involving non-practicing entities (NPEs) increased by double digits in 2025. Stakeholders expect this uptrend to escalate further in 2026 given the policy of the current USPTO administration to restrict access to the lower cost alternative review proceedings of the Patent Trial and Appeal Board (PTAB). As a result, ex parte patent reexamination—a 1980s era challenge mechanism Congress designed the PTAB to effectively replace—is now the only reliable access to the expert agency for patent challengers. 

While patent owners may initially welcome the one-sided patent reexamination process in place of the more robust inter partes system of PTAB trial proceedings, they will be surprised to discover significant drawbacks exist as compared to PTAB trial proceedings. 

For example:

• Broadest reasonable interpretation (BRI) is used to construe claims; not Phillips

• Examiners are free to construct better rejections than those presented in the reexamination request

• There is no mechanism to depose requestor experts who submit declarations with the request

• There is no option for a patent owner to submit a substantive argument before a reexamination order

• Far higher grant rate (historically, 90+%)

• New PTAB discretionary policies do not apply (i.e., no § 314(a) discretion)

• There is no real party in interest (RPI)/privity inquiry control; reexamination filings can even be anonymous

• There is no mechanism to stop serial reexamination challenges

• Duty of disclosure, inequitable conduct risk, prosecution bars, and the unfamiliar prosecution process before examiners may prevent litigation counsel from participating for patent owners

• No legal estoppel for requesters

For patent challengers, in addition to the obvious drawback of the ex parte process, there are additional downsides:

• Examiner involvement delays PTAB review until an appeal

• Patent owners can meet (interview) with the examiner and establish a rapport

• Patent owners can easily add numerous new/amended claims (unlike in the PTAB)

• Unpredictability of examination process, lack of consistency—especially on legal issues

• Loss of strongest prior art to less robust USPTO mechanism relative to review proceedings

• No statutory deadlines for a final decision.