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  • videocam On-Demand Webinar
  • signal_cellular_alt Intermediate
  • card_travel Patent
  • schedule 90 minutes

Back to the Future: Patent Reexamination as a PTAB Alternative

$347.00

This course is $0 with these passes:

CLE
ALL
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About the Course

Introduction

This CLE webinar will guide patent counsel on the use of patent reexamination as a better post-grant option. The panel will discuss the pros and cons of reexamination as well as considerations to weigh before going down this path.

Description

Patent litigation involving non-practicing entities (NPEs) increased by double digits in 2025. Stakeholders expect this uptrend to escalate further in 2026 given the policy of the current USPTO administration to restrict access to the lower cost alternative review proceedings of the Patent Trial and Appeal Board (PTAB). As a result, ex parte patent reexamination—a 1980s era challenge mechanism Congress designed the PTAB to effectively replace—is now the only reliable access to the expert agency for patent challengers. 

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

• Examiners are free to construct better rejections than those presented in the reexamination request

• There is no mechanism to depose requestor experts who submit declarations with the request

• There is no option for a patent owner to submit a substantive argument before a reexamination order

• Far higher grant rate (historically, 90+%)

• New PTAB discretionary policies do not apply (i.e., no § 314(a) discretion)

• There is no real party in interest (RPI)/privity inquiry control; reexamination filings can even be anonymous

• There is no mechanism to stop serial reexamination challenges

• 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


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

• Examiner involvement delays PTAB review until an appeal

• Patent owners can meet (interview) with the examiner and establish a rapport

• 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.

Presented By

Kevin Laurence
Partner
Laurence & Phillips, LLP

Mr. Laurence has been included in IAM’s list of leading post-grant practitioners every year since 2012.  He has taught a course as an adjunct professor at the George Washington University Law School on post-grant patent practice since 2015. Mr. Laurence served as an instructor for the Patent Resources Group in three-day courses on post-grant proceedings held biannually during 2009–2019 and is a co-author of a two-volume treatise titled Post-Grant Patent Practice provided in conjunction with the courses.  Best Lawyers in America named him 2016 “Lawyer of the Year” in Patent Law for Washington, D.C. 

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Scott A. McKeown
Shareholder
Wolf Greenfield & Sacks

Mr. McKeown is a shareholder with Wolf, Greenfield & Sacks in Washington D.C. and a professorial Lecturer in Law at The George Washington University Law School.  Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, he is one of the most active PTAB trial attorneys in the U.S., having handled more than 400 PTAB matters, including those in which more than $500 million was at stake. Mr. McKeown currently serves as lead post-grant counsel to some of the world’s best-known innovators, and is the editor of the award-winning blog PatentsPostGrant.com. 

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Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Wednesday, February 25, 2026

  • schedule

    1:00 PM E.T.

I. Benefits and drawbacks of patent reexamination

II. Considerations when deciding whether to seek reexamination

III. Strategies for seeking review

The panel will review these and other key considerations/strategies, including:

  • Preparing an effective reexamination request
  • Reexamination timing and workload considerations
  • Patent owner prosecution strategies for successfully confirming challenged claims and securing new/amended claims
  • What are the unique uses of patent reexamination as a litigation strategy?
  • What are the considerations in seeking reexamination after a failed IPR?
  • What are the most common/effective strategies for seeking review of examiner decisions within the PTO, and when can requesters participate?