Ryan J. Schermerhorn, Partner

A long-standing default in patent disputes is shifting, as ex parte reexamination rapidly emerges as a strategic alternative to inter partes review. Marshall Gerstein attorneys Ryan Schermerhorn, Greg Smith, and Matt Jorge recently authored an article for Law360 analyzing this significant shift in patent challenge strategy at the U.S. Patent and Trademark Office.

Drawing on recent USPTO data and rule changes, the authors highlight several key developments shaping this trend, including:

• A sharp decline in inter partes review filings and institution rates, making outcomes less predictable for petitioners
• A surge in ex parte reexamination filings, reflecting increased confidence in this alternative pathway
• The introduction of a new USPTO “patent owner preorder paper,” allowing earlier input from patent owners in reexamination proceedings
• Strategic advantages of reexamination, such as lower costs, no estoppel, greater flexibility in timing, and the ability to present more expansive invalidity arguments

The article also provides practical guidance for navigating this evolving landscape. For patent owners, the authors discuss how reexamination can offer opportunities to strengthen claims, while also introducing new procedural considerations. For challengers, they outline how factors such as discretionary denial risk, litigation strategy, and the complexity of invalidity arguments should inform the choice between IPR and reexamination.

As the authors explain, these developments reflect a broader recalibration in how parties approach patent validity disputes, signaling that inter partes review may no longer be the default strategy in all cases. 

Read the full article in Law360.