Brea, CA asked in Patents (Intellectual Property) for California

Q: What would be the cost to have a lawyer file an “Ex parte reexamination” on a patent on our behalf?

We have found a US utility patent that should be invalid under 35 U.S.C. § 102 (b), because the exact product on there was being publicly sold and marketed online for more than one year before the patent filing date. We have collected extensive evidence and are looking for a IP lawyer to writeup that professionally in a request “Ex parte reexamination” form to the USTPO.

2 Lawyer Answers
Kevin E. Flynn
Kevin E. Flynn
  • Patents Lawyer
  • Pittsboro, NC

A: Some challenges post-grant have limits on the type of challenge. An ex parte reexamination under 35 USC 302 is limited to challenges based on prior patents and printed publications. Other forms of challenge address an on-sale bar. Often if a product is on sale, there are user manuals, white papers, and other documents that provide sufficient information to support a printed publication challenge.

I have filed several ex parte challenges. There is a lot of detail put into those filings as the nature of an ex parte challenge is that you drop out of the process and need to rely on your initial filing and maybe a reply to a reply. But as you normally only get to submit one filing, you need to give it your all.

I do not know if I have a conflict as I am already representing someone in that space. But feel free to reach out to me.

Erik Špila agrees with this answer

Joshua David Mertzlufft
Joshua David Mertzlufft

A: Generally, ex parte reexaminations can run between $15,000 and $25,000 for the party requesting it, split between government filing fees and attorney fees and attorney fees. Quite a bit of preparation goes into these filings, and nailing down a more specific estimate could be accomplished after a discussion about the patent in question, the prior art, surrounding circumstances, and strategy.

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