Proposed real party in interest disclosure requirements could reshape defensive patent strategies involving product launches, licensing negotiations, freedom-to-operate analyses, and pre-litigation planning.

Introduction

On Wednesday, July 22, the United States Patent and Trademark Office (USPTO or Office) proposed a rule that would require third-party requesters filing ex parte reexamination requests to identify all real parties in interest (RPIs) to the Office. Although the information could remain confidential from the public, the proposal may diminish one of the key strategic advantages of ex parte reexamination: the ability to challenge patents without publicly revealing the identity of the party behind the challenge. If adopted, the proposal could affect how companies use ex parte reexamination as part of broader patent risk management strategies, including prior to litigation, product launches, licensing negotiations, acquisitions, and market entry. The proposed disclosure requirement would not apply to patent owners requesting reexamination of their own patents.

The proposal could have broader implications for companies operating in patent-dense industries, where ex parte reexamination is frequently used as part of a comprehensive patent risk management strategy. Companies that have relied on anonymous ex parte reexamination to preserve strategic flexibility during business negotiations, litigation planning, licensing discussions, or competitive positioning should consider whether this uncertainty affects their overall patent risk management strategy. Although the proposed rule would not eliminate these strategies, companies should anticipate increased scrutiny regarding who is actually directing or benefiting from a reexamination request.

Background

Under current USPTO practice, third parties may file requests for ex parte reexamination without identifying themselves or other entities that may be considered RPIs. At the same time, however, requesters must certify that they are not barred from filing the request under the statutory estoppel provisions established by the America Invents Act (AIA).

According to the USPTO, the Office has received a significant number of ex parte reexamination requests directed to patents that have already been challenged through inter partes review (IPR) or post-grant review (PGR) proceedings.  

The proposed rule is squarely aimed at enforcing existing AIA estoppel provisions, not at regulating reexamination practice generally. Under 35 U.S.C. §§ 315(e)(1) and 325(e)(1), a petitioner who received a final written decision in an IPR or PGR proceeding, or that petitioner’s real party in interest or privy, is barred from later raising, in any USPTO proceeding, a ground it raised or reasonably could have raised in that earlier proceeding. Because the Office currently has no way to verify who is actually behind an anonymous ex parte reexamination request, it cannot confirm whether that requester, or an unnamed RPI or privy, is already estopped, which is the specific gap the proposed rule is designed to close.

Notably, this is not the first time the USPTO has proposed such a rule. In 2012, the Office proposed a similar rule that would have required identification of the RPI(s) to an ex parte reexamination request. After receiving comments expressing concern that the requirement could have a chilling effect on the filing of ex parte reexamination requests, the Office ultimately declined to adopt the proposed disclosure requirement, instead concluding that a certification that the requester was not subject to statutory estoppel, coupled with practitioners’ obligations under 37 C.F.R. § 11.18, was sufficient to ensure compliance.1 The renewed proposal suggests that the USPTO no longer considers this certification-only approach sufficient in light of the increasing use of ex parte reexamination following AIA post-grant proceedings.

What Would Change?

If adopted, the proposal would require every third-party requester seeking ex parte reexamination to submit a separate statement identifying all RPIs associated with the request. Key aspects of the proposal include:

  • Disclosure of all RPIs. Third-party requesters would be required to identify themselves and all other entities that qualify as RPIs. The proposed disclosure requirement applies only to third-party requesters. Patent owners requesting ex parte reexamination of their own patents would not be required to submit an RPI statement under the proposed rule.
  • Separate confidential submission. The RPI statement would be submitted separately from the reexamination request and, upon request, would not become part of the publicly accessible patent or reexamination file.
  • USPTO review of estoppel. The Office would use the disclosed information to determine whether the requester, or any of its RPIs or privies, is barred from pursuing the reexamination because of prior IPR or PGR proceedings.
  • Fraud and misconduct investigations. The USPTO also states that having RPI information available at the outset would improve its ability to investigate potential misrepresentations, false certifications, or unauthorized practice before the Office.

How the RPI Statement Would Be Shielded

The proposed rule is designed to preserve the confidentiality of RPI information while allowing the USPTO to evaluate statutory estoppel and investigate potential misconduct. If a third-party requester asks that its RPI statement remain confidential, the USPTO proposes to exclude the statement from the patent and reexamination files rather than entering it of record. Because 37 C.F.R. § 1.11(d) provides public access only to papers entered of record in those files, the proposed RPI statement would not be publicly accessible through the ordinary patent file inspection process. The USPTO states that it intends to implement “robust data security measures” to protect confidential RPI information and to take reasonable steps to avoid disclosing such information in Office decisions.

The proposal, however, does not specifically address how confidential RPI statements would be treated in response to a Freedom of Information Act (FOIA) or other compulsory disclosure process, nor does it identify the legal basis on which such information would be withheld if requested outside the patent file inspection process. As a result, while the proposal clearly contemplates that RPI statements will remain confidential as part of the USPTO’s administrative process, the ultimate scope of that confidentiality may warrant further clarification as the rulemaking proceeds.

Reduced Anonymity

One of the primary reasons companies choose ex parte reexamination is the ability to challenge a competitor’s patent without publicly identifying themselves. Under the proposed rule, that confidentiality would largely remain with respect to the public but not with respect to the USPTO itself. For some companies, this distinction is significant. The USPTO would know the identity of the requester and all other RPIs, even where that information is excluded from publicly accessible patent and reexamination files. Companies that have relied on anonymous ex parte reexamination to preserve strategic flexibility during business negotiations, litigation planning, licensing discussions, or competitive positioning should consider whether this uncertainty affects their overall patent risk management strategy.

Greater Focus on AIA Estoppel

The proposal also reflects the USPTO’s increasing focus on preventing parties from using ex parte reexamination to circumvent the estoppel provisions that apply following IPR or PGR proceedings.

Companies that previously viewed ex parte reexamination as an additional avenue for challenging patent validity after an unsuccessful Patent Trial and Appeal Board (PTAB) challenge may need to reevaluate those strategies if the USPTO is able to independently verify the identity of all RPIs before ordering reexamination.

More Careful RPI Analysis

Determining who qualifies as an RPI is often a fact-intensive inquiry. Depending on the circumstances, the analysis may extend beyond the named requester to include parent companies, subsidiaries, affiliates, indemnitors, joint development partners, investors, or other entities with a sufficiently close relationship to the proceeding.

As a result, companies may wish to review their internal procedures for identifying RPIs before initiating future ex parte reexamination requests.

Practical Considerations for Patent Owners and Challengers

Patent Owners

Patent owners should monitor the progress of the proposed rule and consider how RPI disclosures may provide additional opportunities to identify potentially estopped challenges. The proposal may also influence broader enforcement strategies where parallel PTAB proceedings and ex parte reexaminations are anticipated.

Companies Considering Ex Parte Reexamination

Companies that routinely rely on ex parte reexamination should evaluate whether existing internal review procedures adequately identify all potential RPIs before filing. Organizations that coordinate patent challenges across multiple business units, subsidiaries, or affiliated entities may wish to revisit those processes if the rule is adopted. Companies may also wish to consider submitting comments addressing the proposed rule before the August 21 deadline, particularly if anonymity plays an important role in their patent enforcement or defensive strategies.

Questions?

The proposed rule has the potential to affect how companies incorporate ex parte reexamination into broader patent risk management strategies. If your organization routinely uses ex parte reexamination as part of its patent enforcement or defensive strategy, now is a good time to evaluate whether any changes to your internal processes or overall strategy may be warranted.

If you would like to discuss the proposed rule or its potential implications for your business, please reach out to a member of Lowenstein Sandler’s Intellectual Property group.

1 See Changes to Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 46615, 46621-22 (Aug. 6, 2012).