How can a patent owner challenge the decision to grant an ex parte reexamination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

A patent owner has several options to challenge the decision to grant an ex parte reexamination based on a substantial new question of patentability (SNQ):

1. Request reconsideration in the patent owner’s statement under 37 CFR 1.530.
2. Present arguments in the response to the Office action under 37 CFR 1.111(b).
3. Appeal to the Patent Trial and Appeal Board (PTAB) after exhausting options with the examiner.
4. File a petition under 37 CFR 1.181(a)(3) to vacate the reexamination order as “ultra vires” in rare circumstances.

The MPEP states: “To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board.” It’s important to note that the patent owner must first request reconsideration from the examiner to preserve the right for Board review of the SNQ issue.