Question 1

When should I choose ex parte reexamination over IPR?

Accepted Answer

Ex parte reexamination is often considered when the requester wants a lower-cost, patents-and-printed-publications-only proceeding handled by the Central Reexamination Unit, when the 35 U.S.C. § 315(b) one-year time bar would block IPR, or when the requester wants to remain anonymous to the public. After the request, the CRU examiner conducts the proceeding with the patent owner; the requester's role is limited. Reexamination is not free of limits: § 315(e)(1)/§ 325(e)(1) estoppel can bar a request after a final written decision, § 325(d) has been used in 2026 to deny same-challenger requests, and for requests filed on or after April 5, 2026 the patent owner may file a pre-order paper before any order issues.

Question 2

What does the 35 U.S.C. § 315(b) time bar require for IPR?

Accepted Answer

Under § 315(b) an IPR petition is barred more than one year after the petitioner, real party in interest, or privy is served with a complaint alleging infringement of the patent; the § 315(c) joinder exception is narrow. Ex parte reexamination has no counterpart to § 315(b), so a time bar alone does not close off reexamination. Other limits still apply: (1) after an IPR or PGR final written decision, the petitioner, its real parties in interest, and privies may not request reexamination of the same claims on grounds raised or that reasonably could have been raised (35 U.S.C. §§ 315(e)(1), 325(e)(1)); (2) in 2026 the CRU has denied requests under § 325(d) when the same party refiled after its own AIA petition (17 of 62 readable denials mailed May 15 – Oct 9, 2026; floor counts); and (3) for requests filed on or after April 5, 2026, the patent owner may file a pre-order paper of up to 30 pages within 30 days of service (1545 O.G. 217). Board time-bar rulings are not appealable (Thryv, Inc. v. Click-to-Call Technologies, LP, 590 U.S. 45 (2020)).

Question 3

What is 325(d) overlap analysis?

Accepted Answer

Under 35 U.S.C. § 325(d), the USPTO may deny a petition or request that presents the same or substantially the same prior art or arguments previously presented to the Office. For AIA petitions, the Advanced Bionics two-part framework asks (1) whether the same or substantially the same art or arguments were previously presented and (2) whether the petitioner has shown that the Office erred in a manner material to patentability. In ex parte reexamination, § 325(d) is applied separately from the substantial-new-question test, and 2026 Office practice is split: some same-challenger requests were denied (e.g., 90/015,984) while others were ordered (e.g., 90/016,221).

Question 4

Is post-grant review (PGR) only available for newer patents?

Accepted Answer

Generally, yes. PGR is available for a patent that contains, or at any time contained, at least one claim with an effective filing date on or after March 16, 2013 (AIA §§ 3(n)(1), 6(f)(2)(A)), so a continuation-in-part with a single post-March 16, 2013 claim can qualify. A petition must be filed within nine months after grant or reissue. PGR can raise any invalidity ground under 35 U.S.C. § 282(b)(2) or (3), including §§ 101 and 112, except failure to disclose the best mode (35 U.S.C. §§ 321(b), 282(b)(3)(A)). The nine-month window means most patents in litigation are no longer PGR-eligible.

Ex Parte Reexam vs. IPR Decision Tool