Success at U.S. Ex Parte Reexamination!

We are pleased to announce that Nordic Patent Service successfully defended our client’s US patent in Ex Parte Reexamination proceedings.

One of Nordic Patent Service’s Swedish clients, Repiper, was granted a U.S. patent in 2017 for a highly advantageous solution within the pipe relining area.

A Request for Ex Parte Reexamination (EPRx) was filed by a competitor in 2018, alleging that the granted claims were obvious in view of new prior art. EPRx is a procedure which allows, for example, any third party to request reexamination by the USPTO of a granted patent. Such a request may be filed at any time during the enforceability of the patent by submitting prior art to establish a ‘substantial and new question of patentability’.  After hearing the parties involved, the USPTO decides on the outcome of the re-examination proceedings.

In the present case, an ‘Office action in Ex Parte Reexamination’ was issued by the USPTO, in which the examiner agreed with the Request filed. One of our European patent attorneys, Jessica Höeg Hassing, prepared our response. Our arguments were so convincing that the examiner changed his view on inventiveness completely, and decided to maintain the patent as granted without further discussion.

This is a huge success for our client and also for our firm since only 21% of Ex Parte Reexaminations have been maintained as granted since initiation of the Ex Parte Reexamination procedure in 1981.