How Does the USPTO Handle Concurrent Post-Issuance Proceedings On the Same Patent?

Author: Stephanie M. Sanders
Editor: Justin N. Mullen

During the PTAB Boardside Chat on April 5th, 2016, Judges Medley and Chang discussed the relationship between AIA post-grant proceedings, ex parte reexamination, and reissue applications. The Board provided the following chart that includes an overview of the differences between these three Patent Office procedures, which may assist a patentee’s selection of one over another.

Comparison of AIA Reexam and Reissue Proceedings 4.12.2016

***Click the above image to open a larger version of it in a new browser tab.

The full slide deck presented during this PTAB Boardside Chat provides additional information about how the Board responds when these three types of Office proceedings intersect on the same patent or related applications that are still pending. In particular, the Judges noted that there are some instances when the Board will allow an AIA trial to proceed concurrently with an ex parte reexamination or examination of a reissue application on the same patent. In other instances, the Board may stay one proceeding, terminate one (or more) proceedings, or join multiple proceedings.


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