Post grant review proceedings are available after a patent has been examined and issued by the USPTO, and may be used to invalidate a competitor’s patent or strengthen your own patent in the case of a Reissue application. In many instances, these post grant proceedings offer an alternative to costly patent infringement litigation.
The post grant patent attorneys at Schmeiser, Olsen & Watts have experience representing both Patentees and Petitioners on a variety of post-grant patent proceedings, including Inter Partes Review, Post-Grant Review, Ex Parte Reexamination, Covered Business Method Review and Reissue Applications.
Whether you are a patent owner in need of representation to defend your patent, or you wish to challenge a patent that has already been granted, we offer in-depth consultation on the various post-grant procedures available and can advise you on the best course of action.
Inter partes review is a proceeding to challenge the patentability of one or more claims in a patent on the basis of specific grounds, and only after nine months of the patent’s issuance.
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 proceeding to challenge the patentability of one or more claims in a patent on any ground that can be raised in a civil suit, and within nine months of the patent’s issuance.
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). The 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.
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 proceedings 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 reviews apply to financial product or service patents and can only be filed by a Petitioner who has been sued or charged with infringement.
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.
Reissue applications allow the Patent Owner to correct an error in an issued patent. The Patent Owner may address a failure to fully claim the scope of the invention in a broadening reissue, or may narrow the scope of the claims in a narrowing reissue.
Patent reissue applications allow patent holders to correct errors in already issued patents with the U.S. Patent and Trademark Office. The patent owner may address a failure to fully claim the scope of the invention in a broadening reissue, or may narrow the scope of the claims in a narrowing reissue. Only patent owners can file reissue applications, and the patent will only be reissued if there are significant errors in the original patent. It is also important to note that broadening reissues must be filed within two years from the grant of the original patent.
Patent reissue applications are often used to strengthen a patent pre-litigation, or to add claims to cover known patent infringers, and are a valuable enforcement strategy should a third-party challenge a patent’s validity with inter partes review.