The New Patent Defense Playbook: Why Ex Parte Reexamination Is Replacing IPR Strategy by Kevin Bastuba
The New Patent Defense Playbook: Why Ex Parte Reexamination Is Replacing IPR Strategy
Your Patent Risk Strategy Now Depends on Access, Not Argument Strength
If your company faces patent assertions, the first decision you make no longer concerns the strength of your invalidity case. It concerns whether you will even be allowed to present it.
That shift has taken hold over the past year. Changes at the USPTO and new Federal Circuit guidance have narrowed access to inter partes review while expanding the strategic value of ex parte reexamination. The result is a different operating environment for your legal team. What worked two years ago now carries a materially lower probability of success.
For you as a legal or business leader, this is not an abstract procedural change. It affects how you manage litigation exposure, how you allocate budget, and how you preserve leverage when a patent threatens your product or revenue stream.
Understanding this shift is now a prerequisite to making sound decisions under pressure.
Why Your IPR Strategy No Longer Delivers Predictable Outcomes
You Face a Gatekeeping System That Prioritizes Discretion
When your team files an IPR today, the strength of your prior art no longer guarantees a hearing on the merits. The PTAB now evaluates discretionary factors before engaging with your technical arguments.
That means your petition can be denied based on:
- the existence of parallel litigation
- the age of the patent
- policy considerations tied to economic impact
Discretionary denials now represent the majority of rejected petitions, a sharp increase from historical norms. In practical terms, your legal spend can be committed long before you know whether the Board will engage with your arguments at all.
Your Probability of Institution Has Dropped
Recent data shows institution rates have fallen to roughly 20 percent following late 2025 policy changes, down from levels exceeding 60 percent in prior years.
If you are responsible for managing litigation budgets, that change forces a different calculation. You are committing significant resources to a process where the most likely outcome is denial at the threshold stage.
That reality has already reshaped filing behavior across the market. Petition volume has dropped by more than half year over year.
You Still Carry Estoppel Risk When You Proceed
If your IPR does reach a final written decision, estoppel limits your ability to assert invalidity arguments in court that were raised or could have been raised.
For your company, that creates a constraint on flexibility. Your litigation strategy becomes partially locked at the moment of filing. If new prior art emerges or your case evolves, your ability to adapt is restricted.
Taken together, these factors have transformed IPR from a reliable tool into a high-risk, lower-control option.
Why Companies Are Turning to Ex Parte Reexamination Earlier
You Gain Reliable Access to Review
Ex parte reexamination operates under a lower threshold. The requirement to show a substantial new question of patentability results in grant rates exceeding 90%.
For your team, this means you can initiate a proceeding with a high degree of confidence that the USPTO will engage with the substance of your challenge. In a system where access has become uncertain, that reliability changes how you plan.
You Control Timing Instead of Reacting to It
IPR forces your team into a one-year filing window after being sued. Ex parte reexamination carries no such constraint.
That difference matters in practice. It allows your legal team to:
- act after deeper technical analysis
- respond to developments in litigation
- introduce new prior art at a time that aligns with your broader strategy
You move from a reactive posture to a controlled one.
You Can Challenge Without Immediate Exposure
Ex parte reexamination allows anonymous filing. That changes how you manage early-stage disputes.
Your company can initiate a validity challenge without immediately revealing its identity or litigation posture. This creates space to shape strategy before the patent owner fully understands the source or scope of the threat.
You Can Apply Sustained Pressure Over Time
Because your role ends after the proceeding is initiated, the cost structure remains lower than a full PTAB trial. More importantly, the absence of estoppel allows your team to return with additional requests based on new prior art or evolving claim language.
Instead of relying on a single high-stakes challenge, you can apply pressure in stages. This creates leverage in both litigation and settlement discussions.
How the Federal Circuit Expanded Your Strategic Options
The Federal Circuit’s January 2026 decision in In re: Gesture Technology Partners, LLC, removed a key constraint that previously limited how you could combine these tools.
The court held that estoppel from an IPR does not extend to ongoing ex parte reexamination proceedings. Once reexamination begins, the USPTO examiner controls the process, not the requester.
For your strategy, this means you are no longer forced to choose between forums.
You can file an IPR to pursue an early, adversarial resolution while also initiating ex parte reexamination as a parallel track. If the IPR fails at institution or on the merits, the reexamination continues. If the IPR succeeds, the reexamination still exerts pressure on remaining claim scope.
This dual-track approach reduces reliance on a single outcome and gives your team multiple ways to influence the validity landscape.
Why Policy Now Extends Beyond Patent Law into Business Reality
The USPTO’s March 2026 memorandum introduces addition factors for discretionary denial that directly connect patent review to economic policy.
Institution decisions now consider:
- whether your products are manufactured in the United States
- whether the patent owner maintains domestic production
- whether your company qualifies as a small business
For you, this introduces a new layer of analysis. Your supply chain, investment footprint, and corporate structure can influence whether your petition is heard.
If your company relies on global manufacturing, your exposure to discretionary denial increases. If you maintain domestic production, you gain a potential advantage.
These considerations sit outside traditional patent law analysis, yet they now affect your ability to access PTAB review. This further reinforces the value of ex parte reexamination, where these discretionary factors carry less influence.
The Strategic Trade-Off You Now Have to Manage
When you choose between IPR and ex parte reexamination, you are choosing between control and access.
IPR offers active participation, structured argument, and a defined timeline. It also carries higher cost, lower institution probability, and estoppel risk.
Ex parte reexamination offers reliable access, flexible timing, and the ability to revisit the same patent multiple times. It limits your participation after initiation and allows the patent owner to amend claims more freely.
For your company, the question is no longer which tool is better in isolation. The question is how to combine them in a way that preserves leverage across the life of a dispute.
How AI Is Expanding What Your Legal Team Can Execute
The shift toward multi-forum strategy aligns with broader changes in how legal work is produced.
Patent practice is fundamentally language-driven. It involves analyzing prior art, constructing arguments, and producing structured written work. Large language models operate effectively in this environment and can process legal and technical information at scale.
For your legal team, this translates into a different level of capability.
AI systems can identify new ways to frame existing prior art, enabling repeated challenges under the substantial new question standard. They can support faster preparation of reexamination requests and maintain consistency across filings.
More importantly, they allow your team to pursue multiple proceedings without proportional increases in cost. As shown in practice, AI-driven workflows increase output per attorney while reducing the time required to produce high-quality work product.
This operational shift makes the dual-track strategy feasible at scale.
What This Means for How You Should Approach Patent Defense
Your strategy should now begin with forum selection rather than argument construction. You need to evaluate where you are most likely to gain access to review and how each forum affects your long-term flexibility.
You should consider parallel proceedings as a default option rather than an exception. Using IPR and ex parte reexamination together allows you to balance early resolution against sustained pressure.
You also need to incorporate business factors into your legal analysis. Manufacturing footprint and corporate structure now influence outcomes at the institution stage.
Finally, your ability to execute this strategy depends on operational capability. Legal teams that integrate AI into their workflows can sustain the level of output required for iterative and multi-forum challenges.