Procedures available at the USPTO for challenging issued patents

By Sarah Cassinis

Third Party Challenges:

The American Invents Act (“AIA”) has provided certain provisions for third parties to challenge issued patents at the United States Patent and Trademark Office (“USPTO”), as an alternative to litigating patent validity in federal district court.  These alternatives to litigation include post grant review and inter partes review. Ex parte reexamination, which predates the AIA, was retained.

Post Grant Review:

Post grant review is a new trial proceeding which allows a third party to challenge an issued patent and review the patentability of claims.  Patents with a priority date after March 15, 2013 are eligible for post grant review, although post grant review is available for all covered business method patents regardless of priority date.  The process for post grant review begins when a party other than the owner of the patent files a petition for review within nine months of issuance of the patent.  After the nine months have passed, post grant review may not be requested.

Post grant review allows a third party to challenge patentability on any grounds that could be raised under paragraph (2) or (3) of 35 U.S.C. 282(b).  These grounds include novelty, obviousness, written description, enablement, and indefiniteness, but not best mode.  The review of patentability is not based solely on just patents and printed publications, but may also include other factual evidence or expert opinions relied on to support a challenge to a claim.

Prior to initiating the post-grant review, the Patent Trial and Appeal Board must find that it is more likely than not that at least one of the claims challenged is unpatentable.  The USPTO fee for a post grant review is currently $30,000, but if post grant review is denied, $18,000 may be refunded.  The proceeding is expected to be completed within one year of its commencement.  Decisions in this proceeding are immediately appealable to the U.S. Court of Appeals for the Federal Circuit.

Inter Partes Review:                                                              

Inter partes review is another new trial proceeding to review the patentability of claims and can be used as an alternative to litigation.  The effective date for the inter partes review provision in the AIA was September 16, 2012.  Patents issuing under the first-to-invent provisions are immediately eligible for entry into this program.  Proceedings for patents issuing under AIA first-to-file rules must be initiated after the nine month window for post grant review has closed, or any post-grant review proceedings have been terminated.  The proceeding must be initiated by a party other than the owner of the patent.

Inter partes review allows a third party to challenge patentability of claims only on grounds raised under 35 U.S.C. §§ 102 or 103.  Evidence for inter partes review is strictly limited to prior art consisting of patents or printed publications.

The petitioner must prove that there is a reasonable likelihood that he will prevail as to at least one of the claims challenged in order to commence an inter partes review.  Inter partes review is a trial before the Patent Trial and Appeal Board, which allows for limited discovery and continued participation. The USPTO fee for conducting an inter partes review is currently $23,000 and if post grant review is denied, $14,000 may be refunded.

Ex Parte Reexamination:

Ex parte reexamination remains substantially intact after passage of the AIA.  An ex parte reexamination can be requested by the patent holder or another party at anytime during the period of enforceability of the patent.  However, the review process itself involves only the USPTO and the patentee.  Ex parte reexamination will continue to be conducted before the examining corps, and not the new Patent Trial and Appeal Board.  A three examiner panel at the Central Reexamination Unit handles the case.  The review of a patent will be based solely on patents and printed publications.  The standard for instituting ex parte reexamination remains “a substantial new question of patentability,” as opposed to the new higher standard in inter partes review – “a reasonable likelihood of prevailing on at least one claim.”  Ex parte reexamination has a USPTO fee of $6,000 (current) to request for a small entity.  Decisions here are appealable to the Patent Trial and Appeal Board.