Executive Summary: The USPTO should amend its reexamination rules to expressly permit electronic service by agreement, following the model already established for inter partes review. Although reexamination papers may be filed electronically, 37 C.F.R. § 1.248 provides no express electronic-service option, and the Central Reexamination Unit has publicly explained that its transmission provision permits first-class mail but excludes email and facsimile. This framework creates

Executive Summary: The announced return of merits institution determinations in inter partes review to the Patent Trial and Appeal Board offers an opportunity to align decisional responsibility with institutional expertise. Because the Director-centered process already incorporates administrative patent judge consultation, the case for reform rests on giving specialist panels responsibility for collective deliberation, resolving technical disagreements, and explaining their d

Executive Summary: Section 325(d) permits the USPTO to reject an ex parte reexamination request that presents the same or substantially the same art or arguments previously presented to the Office, but repetition alone does not establish an entitlement to relief. For patent owners, the central procedural question is when and how to invoke that discretion. The April 2026 procedure excludes § 325(d) arguments from the newly authorized pre-order paper and creates no separate opp

Executive Summary: Ex parte Chowdhury confirms that whether alternatives form a proper Markush group depends on their technical unity in the context of the claimed invention, rather than on whether they are identical in every structural or functional respect. Context determines the relevant level of analysis, but a shared result stated at a high level of generality cannot alone transform an arbitrary list into a proper group. This article situates Chowdhury within the predece

Executive Summary: This article examines whether prior art cited or considered during prosecution of a parent application may support discretionary denial under 35 U.S.C. § 325(d), even when the reference does not appear on the face of the challenged patent. It explains that MPEP § 609.02 permits information considered in a direct parent to carry forward into a continuation without being resubmitted merely for consideration, making the prosecution history more probative than