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An appeal from an Examining Attorneys action is taken to the Trademark Trial and Appeal Board (Board). An Examiner who refuses registration will issue an Office Action.
After a PGR request is filed, a patent owner has three months in which to file their preliminary response. Following this response, the PTAB has an additional three months to decide whether to move forward with the trial.
For the last five years of data from 2017 to 2021, ex parte reexamination request grant rates have averaged 95%. On the other hand, IPR institution rates for the last five years of data from 2017 to 2021 have averaged 60%, had a high of 87% in 2013, and were 59% in 2021.
An ex parte appeal is an alternative to continuing prosecution before the Examiner. It is the consideration of the application as is and does not permit the Applicant to make substantive amendments.
(a) Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under 1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C.
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The ex-parte method of review, unlike Inter Partes Review (IPR), involves only the owner of the patent rights and the United States Patent and Trademark Office (USPTO), with the role of the third-party applicant for review being restricted to merely filing the request for review.
Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as when the third party requester can participate, the types of Office actions and the timing of issuance of the Office actions, and the requirement for identification of the real party in interest.
Ex parte reexamination proceedings involve only the patent owner and the USPTO. After the request is filed, the third-party requester is removed from further involvement unless the patent owner files a statement seeking to rebut their assertions.

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