Surviving Patent Reexamination: Practical Strategies For In-House Counsel

Even recently granted patents are facing unprecedented scrutiny. With ex parte reexaminations already topping more than 250 filings in the second quarter of 2026, corporate intellectual property (IP) portfolios are increasingly under threat. The United States Patent and Trademark Office (USPTO)Director’s recent decision to reexamine one of Nintendo’s newly issued patents underscores the threat.

For in-house counsel, waiting until a validity challenge hits your desk is a costly gamble. Below, we outline strategic steps, common pitfalls, and practical considerations to navigate ex parte reexaminations effectively.

Understanding ex parte reexamination

Ex parte reexamination allows the USPTO to revisit the validity of an issued patent based on prior art patents or printed publications. Because it can directly affect ongoing or anticipated litigation, it is an important tool for both patent owners and challengers.

Any party, including parties engaged in litigation, may request reexamination. The USPTO will grant the request if it finds at least one substantial new question of patentability.

Once reexamination is ordered, the patent owner has two months from the mailing date to file an optional statement, including arguments distinguishing the claims from cited prior art and/or non-broadening amendments. If filed, third-party reexamination requesters may respond.

The examiner reviews the claims in view of the prior art and issues a first Office Action detailing which claims are allowed, which are rejected, and why. The patent owner responds, and if rejections are maintained, a final Office Action typically follows.

The patent owner then has two months to respond and should ensure the response fully addresses each issue raised. If the examiner maintains any rejections, a final Office Action is typically issued. In limited circumstances, prosecution may be reopened if the final action is found to be improper.

If the patent owner disagrees with the outcome, they may appeal to the Patent Trial and Appeal Board (PTAB). The process concludes with an ex parte reexamination certificate confirming, canceling, or amending claims.

Strategic considerations for response

A successful response begins with understanding the prior art in relation to the patent claims. In-house counsel should work with IP counsel and technical experts to identify gaps in the prior art, consider whether references can be properly combined, and determine whether meaningful distinctions exist.

The strategy centers on defending the original claims or pursuing targeted amendments. Where viable, arguments should distinguish the claims from prior art. If the claims appear vulnerable, narrowing amendments may be necessary while still preserving meaningful protection. Any amendment must be considered carefully, as it may affect claim scope and enforcement.

Supporting evidence is often crucial. Declarations under 37 CFR 1.132 are sworn, written statements of fact—signed under penalty of perjury by inventors or technical experts—used to provide concrete evidence to the Patent Office. These statements help establish non-obviousness through real-world proof, such as unexpected test results, a long-felt unsolved need, or the prior failure of competitors. Ultimately, they clarify what a person of ordinary skill in the art would have understood at the time of the invention and highlight critical technical distinctions that aren’t obvious from the cited references.

Ultimately, even when outside IP counsel is engaged, in-house legal teams should maintain an understanding of how the prior art relates to the claims and how each strategic decision may affect the patent’s strength, scope, and enforceability.

Coordinating with litigation

Reexamination can materially affect parallel litigation, potentially altering timing and strategy. Courts may stay proceedings pending reexamination outcomes, delaying resolution but creating an opportunity to strengthen or refine claims before trial.

This overlap makes coordination essential. In-house counsel should ensure that patent prosecution counsel and litigation counsel are aligned on strategy, positions, and messaging across proceedings. Inconsistent arguments can undermine credibility and create avoidable risk.

Care should be taken in developing arguments during reexamination, as statements before the USPTO may be used in litigation, including use for claim construction or challenging validity and infringement positions. Every submission should be evaluated for both its impact on the reexamination and for how it may be interpreted in court.

Proactive portfolio management

An effective reexamination strategy often begins well before a challenge arises. Proactively managing your portfolio reduces vulnerability and positions patents more defensibly when third parties scrutinize them.

A key step is identifying risk early. Prior art searches can surface vulnerabilities, allowing companies to assess exposure and take action, including pursuing continuation applications with refined claims.

Claims strategy also requires balance. While demonstrating infringement may be easier with broader claims, such claims are often more susceptible to invalidity challenges. A thoughtful prosecution strategy should aim to secure claims that are both commercially meaningful and resilient under scrutiny, supported by a clear record of distinguishing from prior art.

Equally important is maintaining the evidentiary record. Documentation of development timelines, technical decisions, and the state of the art at the time of invention can prove critical if validity is challenged. These records can support declarations under 37 CFR 1.132, including evidence of non-obviousness and the knowledge of a person of ordinary skill in the art.

Conclusion

Reexamination is not the end of the road for a patent. It is a critical inflection point that can reaffirm or refine your intellectual property rights. For in-house counsel, the path forward requires not only a timely response but also a clear understanding of prior art, coordination across proceedings, and alignment with broader business and litigation objectives.

The key is preparation. By understanding a patent’s strengths and vulnerabilities before they are tested, legal departments can respond with confidence and protect the innovations that matter most.

Originally published by Today's General Counsel .