"The ruling clarifies that a party is estopped from 'requesting' ex parte reexam at the moment the IPR final written decision issues when the USPTO has yet to order ex parte reexam."
"U.S. patent law bars a petitioner from 'request[ing] or maintain[ing] a proceeding before the Office' with respect to claims addressed in a prior IPR final written decision."
"The Office drew a bright line defining two distinct time periods: the period from filing a request for ex parte reexam up to the Director's order of reexamination, and the period after that Section 304 order."
The USPTO's Decision on Remand clarifies the timing of estoppel under 35 U.S.C. § 315(e)(1) regarding inter partes review (IPR) and ex parte reexamination. A party is estopped from requesting ex parte reexamination once the IPR final written decision is issued, even if the USPTO has not yet ordered the reexamination. The ruling establishes two distinct periods: the request period before the Director's order and the proceeding period after the order, emphasizing that no proceeding exists until the order is issued.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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