Wolf Greenfield Webinar: The Reinvention of Patent Reexamination (“EPR”)

Join Wolf Greenfield for a webinar examining recent shifts in USPTO post-grant practice and their impact on patent strategy. 

This webinar will review:

• What are the considerations in seeking ex parte reexamination (EPR) after a failed inter partes review (IPR)?
• What unique benefits of patent reexamination impact litigation strategies?
• What are the most common/effective strategies for seeking review of examiner decisions within the PTO and when can requesters participate? 

Patent reexamination filings have increased 400% since 2025, a trend that tracks the agency’s new policies restricting access to PTAB trial proceedings. At the same time—and not coincidentally—litigation involving non-practicing entities (NPEs) has increased by double digits. These new post-grant developments have caught patent holders and patent challengers flat-footed, and the unprecedented evolution of USPTO post grant policy continues almost weekly.

In April, despite controlling regulations to the contrary, the USPTO announced a new pilot program allowing patent owners to submit argument within 30 days of a third-party reexamination challenge. Other recent changes include enhanced RPI/privity representations from third parties and potential inquiries as to government affiliations.

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.
• There is no mechanism to depose requestor experts that submit declarations with the request.
• Far higher grant rate (historically, 90+%).
• New PTAB discretionary policies do not apply (i.e., no § 314(a) discretion).
• 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.
• Pilot program downsides relative to a Motion to Stay. 

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

• Unfamiliar procedural petitioning practices.
• 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.
• Potential abuse of Pilot program.

This webinar will review these and other key considerations/strategies in the evolving EPR landscape.

• Elisabeth Hunt, Chair, Post-Grant Proceedings Practice
• Scott McKeown, Shareholder, Post-Grant Proceedings Practice

Wolf Greenfield is an accredited CLE provider in New York. If you attended our webinar live and are seeking CLE credit, please contact Dani Napier.