By Matthew C. Phillips and Kevin B. Laurence of Stoel Rives LLP | Matt Phillips and Kevin Laurence are partners at Stoel Rives LLP. Matt is an adjunct professor teaching patent prosecution at Lewis & Clark Law School in Portland, Oregon. Kevin has taught a variety of patent law courses as an adjunct professor at the law schools of Brigham Young University and the University of Utah. Together they teach the multi-day course “Patent Reexamination and Reissue Practice” for Patent Resources Group. |
Our July 2010 article discussed the filing requirements for an ex parte
reexamination request, best practices for preparing a request, and guidance recently published by the
PTO
regarding filing compliant requests.1
This article discusses the unique additional requirements for requesting inter partes
reexamination.
WHEN IS INTER PARTES REEXAM AVAILABLE?
Only patents granted from an "original application" filed on or after November 29,
1999, are eligible
for inter partes reexamination.2
While there was an initial transition period when inter partes reexamination was an
infrequent possibility,
it is increasingly available as an option for a patent challenger.
An "original application" includes first-filed, divisional, continuation, and continuation-
in-part
(CIP) applications, as well as now-defunct continuing prosecution applications (CPAs).3
Thus, a divisonal, continuation, CIP or CPA filed on or after November 29, 1999 is eligible for
inter
partes reexamination even if it has an earlier priority date.
A United States national stage filing of an international PCT application is also ...
