A post-grant procedure occurs after the Patent Office has examined and issued a patent. A number of these procedures are available to invalidate a patent at less cost than traditional litigation. Often times, these procedures are utilized as a litigation strategy. Our attorneys have experience in post-grant practice representing both the Patentee and the Petitioner challenging the patent. If you are a Patent Owner, and you need representation to defend your patent, please contact us. Also, please contact us for an in-depth consultation to determine if one the following post-grant procedures is appropriate to accomplish your goals.
Inter partes review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Inter partes review corresponds with post grant review, such that for first-inventor-to-file patents, inter partes review process begins with a third party filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review.
These deadlines do not apply to first-to-invent patents. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1-1 ½ years. Inter partes review applies to any patent issued before, on, or after September 16, 2012.
Post grant review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). Post grant review process is initiated by a third party filing a petition within 9 months of the grant of the patent or issuance of a reissue patent.
The standard for instituting a post grant review proceeding is a showing that it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 – 1 ½ years.
Ex parte reexamination is a proceeding in which any person (third party or patent owner) may request reexamination of a U.S. Patent based on one or more prior patents or printed publications. A requester who is not the patent owner (i.e., a “third party requester”) has only limited participation rights in the proceeding.
A request for reexamination must establish that prior patents and/or printed publications establish a substantial new question of patentability in order for the USPTO to grant the ex parte reexamination. Ex parte reexamination proceeding occur between the USPTO and the patent owner, with notices sent to any third party requester. If the ex parte reexamination is granted, a final determination by the USPTO may take over 2 years.
Covered business method review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a covered business method patent. A covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.
Covered business method reviews employ the standards and procedures of a post grant review, with certain exceptions. For example, for first to invent patents only a subset of prior art is available to support the petition, as defined in section 18(a)(1)(C) of the America Invents Act. Further, a person may not file a petition for a covered business method review unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or charged with infringement under the patent.