Principal Nicholas Jepsen Discusses Advantages and Drawbacks of Ex Parte Reexams

In comments to Law360, Principal Nicholas Jepsen weighs in on rising interest in ex parte reexaminations as an alternative to Patent Trial and Appeal Board (PTAB) proceedings. As recent policy shifts introduce changes to PTAB practice, ex parte reexams are gaining traction for patent challengers, particularly because they allow for greater flexibility around timing, anonymity, and post-proceeding litigation strategies. Jepsen points out that these benefits come with trade-offs, particularly the risk that patent owners can amend claims with little challenger involvement once the reexam process begins.

Excerpt: “In a reexamination, 'the biggest risk for the patent challenger is the amendment by the patent owner,' said Nicholas Jepsen of Fish & Richardson. He added that since it gives the patent owner an opportunity they otherwise wouldn't have and creates uncertainty in litigation, 'some defendants decide that that risk is not worth filing a reexam.'”

Read the full article: Reexams Get Fresh Look As PTAB Policies Add Uncertainty - Law360