Executive Summary: This article argues that a patent owner facing a third-party-requested ex parte reexamination alongside infringement litigation should ordinarily waive the optional post-order statement authorized by 35 U.S.C. § 304. Filing before the first Office action requires the owner to address potential theories before the examiner has identified an actual rejection, gives the requester a statutory opportunity to refine its challenge, and creates additional prosecuti

Executive Summary: A deliberate prefiling prior-art search can serve as a specification-design tool, not merely a patentability screen. By identifying “framing references,” accurately describing their architectures and limitations, and tying each distinction to a claimed technical mechanism, an applicant can create an intrinsic record that supports patent eligibility under 35 U.S.C. § 101 and informs later claim construction. That record may allow the patent owner to demonst

Executive Summary: This article compares the USPTO ex parte appeal process before the PTAB with the JPO appeal against an examiner’s decision of refusal, using each system as a teaching framework for practitioners trained in the other. Its central point is that the two systems are analogous but not interchangeable: a USPTO appeal is triggered by the “twice rejected” rule and proceeds through a record-centered, brief-driven sequence—Notice of Appeal, Appeal Brief, Examiner’s A

Executive Summary: The USPTO’s new pre-order paper procedure gives patent owners a narrow but potentially consequential opportunity to challenge an ex parte reexamination request before the Office orders reexamination, but the article emphasizes that this opportunity must be framed consistently with the low SNQ threshold: the patent owner need not, and should not, try to disprove unpatentability; rather, it should show that the request misidentifies the cited reference’s teac

Executive Summary: This article explains why responding to an Office Action in ex parte reexamination requires a different strategy than responding during ordinary patent prosecution. In ordinary prosecution, the applicant is generally trying to obtain commercially useful claim scope and may have procedural flexibility through amendment, RCE practice, or continuation practice. In reexamination, by contrast, the patent owner is defending issued rights—often in parallel with li