Writing in Reuters Westlaw Today, attorneys Douglas Wentzel and Joshua Martineau offer an overview of § 325(d) petition practice, an important but often overlooked opportunity for patent owners to request that the USPTO discretionarily deny a third-party request for ex parte reexamination (EPR).
As Wentzel and Martineau explain, the USPTO has discretion under 35 U.S.C. § 325(d) to deny EPR requests which are based upon substantially the same prior art or arguments that previously were presented to the Office. Patent owners facing third-party EPR requests can file a § 325(d) petition with the USPTO, requesting discretionary denial of the request. Doing so allows patent owners to file arguments before the USPTO reaches a decision on the EPR request.
Throughout the article, Wentzel and Martineau break down the process of filing a § 325(d) petition and compare the USPTO’s application of § 325(d) in EPRs with the PTAB’s application of that statute in IPRs. They conclude with several tips for practitioners to increase the likelihood of success of § 325(d) petitions.
Read the full article here.
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