Post Grant Proceedings

  1. Overview Article: “Eliminating Someone Else’s Patent: An Overview of Post-Grant Proceedings”
    1. The U.S. Patent and Trademark Office (USPTO) thoroughly examines every granted patent, but the USPTO sometimes makes mistakes.  The USPTO may mistakenly grant patents that are fundamentally unclear, or that claim inventions that were not new at the time the corresponding applications were filed.  These patents are potential threats to the businesses of anyone working with similar technologies.

      Fortunately, there are several options for invalidating patents that should have never been granted in the first place.

      Ex Parte Reexamination – Each granted patent is supposed to cover a new and nonobvious invention.  When a patent appears to cover an old or obvious invention, the USPTO can reexamine and cancel the patent after it has been granted.

      Anyone can request the USPTO to reexamine the granted patent in light of specific patents and printed publications – even the patent owner.  The request should explain why the patent was disclosed or obvious in light of the patents and printed publications.  The USPTO may decide to reexamine the patent based on the request.  If so, the reexamination proceeds much like the initial examination of the application.  An examiner will issue an Office Action detailing how and why the invention in the patent is not new or is obvious in view of the prior art presented in the request, and the patent owner will have an opportunity to respond, and even to amend claims.

      However, ex parte reexamination does come with some risk for those wishing to invalidate a competitor’s patent. Third-party requesters are not allowed to fully participate in the reexamination once it has been granted.  In addition, if the request is not effectively drafted or if the patent owner successfully navigates the reexamination process, the patent could appear stronger than before.

      Submitting a request for ex parte reexamination is a good option for eliminating a patent to an invention that was clearly old or obvious at the time the corresponding application was filed.

      Inter Partes Review – Like ex parte reexamination, inter partes review can be used to cancel a patent that covers a technology that was old or obvious when the corresponding application was filed.  Unlike ex parte reexamination, the USPTO conducts inter partes review through a formal, adversarial process.

      Any third-party requester can file a petition for inter partes review of any enforceable patent.  The petition should present why the patent was anticipated or would have been obvious at the time of the filing in light of prior patents or printed publications.  If the petitioner shows that the patent is more likely than not to be invalid, a panel of three administrative law judges will grant inter partes review of the patent.

      Congress intended inter partes review to provide a quick and cost-effective avenue to invalidate poor-quality patents.  As a result, the USPTO must act with relative speed throughout the entire proceeding, and ultimately determine whether to cancel the patent within one year after it institutes inter partes review.

      Typically, the patent owner has three months to respond to the petition and/or request to amend the claims of the patent after inter partes review is instituted.  In turn, the petitioner has three months to respond to the patent owner and/or oppose the request to amend.  Optionally, the parties can agree to hold an oral hearing on the issues before the panel of administrative law judges assigned to the case.  Within a year of institution, the panel will decide whether to cancel the patent on the basis of the petitioner’s argument.

      Inter partes review is a great option to quickly dispose of a patent that you are concerned about—whether because you are concerned it could be asserted against you or because it has already been asserted against you.  However, the rapid schedule and limited grounds to invalidate the patent may present problems to some would-be challengers.

      Post-Grant Review – Like inter partes review, post-grant review is an adversarial process conducted before a panel of administrative law judges.  Unlike inter partes review, however, a petitioner can argue that a patent is invalid for nearly any reason under U.S. patent law.  For example, post-grant review can be used to invalidate a patent because its claims are indefinite, or because it lacks appropriate written description.  Post-grant review uniquely applies only to recently granted patents filed under the first-inventor-to-file provisions of the America Invents Act (AIA).

      Procedurally, post-grant review also resembles inter partes review.  A challenger can request a panel of administrative law judges to institute review by filing a petition.  After institution, the panel will issue a final decision canceling or upholding the challenged patent within one year.

      Post-grant review is close to a complete alternative to litigation for invalidating patents at a fraction of the cost.  Post-grant review currently only applies to a small percentage of enforceable patents effectively filed on or after March 16, 2013. However, if available, post-grant review is an attractive option for those who are able to identify the patent they would like to invalidate shortly after it has issued.

      Patent Litigation – Issued patents can also be invalidated by a federal court in litigation.  Invalidity can be asserted against any enforceable patent in litigation.  However, in general, only a party that has been sued or threatened with a suit for infringement of a patent will assert that the patent is invalid in federal court.  If the party has not already been sued, initiating a declaratory judgment action to assert that the patent is invalid may invite a countersuit for infringement.  Either way, parties in litigation are often forced to engage two fronts simultaneously.

      Defending infringement and asserting invalidity in court can result in a drawn-out and expensive battle, often costing millions in attorneys’ fees and years of delay before a final determination is reached. For this reason, defendants of patent infringement in litigation may seek to halt proceedings by initiating one of the other options listed above at the USPTO.

      If you believe that you would like to challenge an enforceable patent using any of the options outlined above, please contact us.

      1. Article on Ex Parte Reexamination: “The Ex Parte Reexamination Process”

      Ex Parte Reexamination (EPR) is a unique kind of post-grant proceeding because it can be requested by anyone.  A patent owner can request the USPTO to reexamine an issued patent in order to bolster the strength of the patent or a third party can request reexamination to cancel the patent if it should never have been granted in the first place.  Although EPR can be a useful tool for specific purposes, it does hold some risks that should be considered before initiating the EPR process.

      In contrast to adversarial proceedings, such as Inter Partes Review (IPR), EPR is conducted primarily between the USPTO and the patent owner.  Accordingly, the USPTO largely controls the EPR process after it is initiated.

      The Request.  The EPR process can be initiated by filing a request with the USPTO.  The request can be filed by anyone—including the patent owner or any third party.  The request can be filed at any time during the enforceability of the patent.

      A successful EPR request will cite prior art references and present arguments to convince the USPTO that the cited references raise a substantial new question of patentability of one or more claims of the patent.  The references may be new references, which were not considered by the USPTO in the original prosecution of the patent, or may be previously considered references interpreted in a new way.  Only patents and printed publications can be cited in an EPR request.

      The request must, among other things:

      1. Point out each substantial new question of patentability based on the cited references
      2. Explain the pertinence of the cited references to each claim on which reexamination is requested
      3. Present a copy of each of the cited references
      4. Certify that the cited references have been served on the patent owner, if the requester is not the patent owner

      Unique to EPR, the patent owner may also submit a proposed amendment to the claims with the request if the patent owner is the requester.  The availability of claim amendments post-issuance is limited for patent owners.   Although claim amendments are available in some adversarial proceedings, the patent owner has limited control over the nature of the amendments being made.  Claim amendments may also be available via a reissue application, but this requires surrender of the patent and does not permit amendments that broaden claim scope unless the patent is less than 2 years old.

      Once a complete request is received by the USPTO, the request cannot be withdrawn.

      Institution of EPR.  The USPTO assigns each EPR request to an examiner who was not directly involved in the original prosecution of the patent.  Within three months of the filing date of the request, the assigned examiner will issue a decision on the request.  If the assigned examiner finds the request persuasive, the USPTO will begin reexamining the claims at issue.[1]

      After reexamination is ordered, the patent owner may file a statement within two months explaining why the patent owner believes the claims to be patentable in consideration of the references cited in the request.  The patent owner must serve the response on the requester, if the EPR request was not filed by the patent owner.  Within two months of service, the requester may submit a reply to the statement filed by the patent owner.  However, no additional submissions by the requester are permitted if the patent owner chooses to waive its right to file a statement.

      The Reexamination Process. During reexamination, the assigned examiner will reexamine the claims in view of the references presented in the request, and issue Office actions as necessary.  The patent owner may present arguments and/or amendments in response to the Office actions, similar to a conventional examination process.  However, because only the references and claims discussed in the request are considered, and the patent owner cannot file a request for continued examination (RCE), the EPR process generally takes less time than conventional examination.

      The Reexamination Certificate.  At the conclusion EPR, the examiner issues a reexamination certificate.  The reexamination certificate confirms the patentability of the claims that the examiner finds allowable, and/or cancels claims that the examiner finds unallowable.  A reexamination certificate allowing specific claims can be valuable evidence of validity in future proceedings, such as litigation or IPR.

      EPR can be a cost-effective tool for invalidating or bolstering patents before they are asserted in litigation.  In 2017, the cost for submitting a request for EPR as a large entity is $12,000, with additional discounts for small and micro entities – a fraction of the price of IPR.  However, EPR does have limitations.  For a third party requester, the limited ability to participate in the reexamination process in EPR may make IPR a more attractive option.  For the patent owner, even the ability to amend claims may not be worth the possible risk that the USPTO will invalidate claims.

      Regardless of whether you are a patent owner or a third party requester considering EPR, a carefully crafted request and legal experience in the EPR process are essential for a successful outcome.  If you would like more information on filing a request for ex parte reexamination, please contact us.

      • Article on Inter Partes Review: “The Inter partes Review Process”

      Inter partes review (IPR) is a type of administrative proceeding before the U.S. Patent and Trademark Office, in which the Office determines whether a patent should have been granted.  If the Office determines that any claims of the patent should not have been granted, it will cancel the claims in a final decision.  Although the rules governing IPR can be complicated, a brief overview the IPR proves  helpful in determining whether this type of proceeding is a viable option.

      The Petition.  A third-party can request the Office to institute an IPR on an enforceable patent by filing a petition with the Patent Trial and Appeals Board (PTAB).  The petition should articulate how one or more claims of the patent are anticipated or obvious by prior patents or printed publications.

      An IPR is sometimes used as a defensive response to a civil lawsuit alleging patent infringement.  In this case, the defendant must file the petition to institute IPR at the USPTO within one year of the date the case was initiated in order to pause the case.

      This approach to defending an infringement suit has a few advantages over alleging invalidity in court.  For example, a defendant in an infringement case can halt the litigation proceedings by filing an IPR petition.  After filing the petition, the defendant can apply to stay the infringement case, and solely focus on challenging the validity of the patent in the IPR proceeding.  This permits the defendant to assert invalidity in a less costly and more technically savvy forum than federal court.  In addition, if successful, the defendant can avoid the substantial litigation costs of simultaneously defending against an allegation of infringement while asserting that the patent is invalid.

      Opposing the Petition to Institute IPR. After the petition to institute IPR is filed, the patent owner may, but is not required to, file an opposition to the petition within three months of the petition’s filing date to point out why the IPR should not be instituted.  For instance, the opposition may be used to argue that the petitioner has failed to establish that the patent is more likely than not to be invalid.

      Institution of the IPR. Within six months of the petition’s filing date, the Board will decide whether to institute the IPR.  The Board will issue a formal decision detailing its reasons for instituting or not instituting the IPR case on the grounds presented in the petition.  Optionally, the petitioner or the patent owner may file a request for rehearing in order to ask the Board to reconsider any part of the institution decision.  However, the institution decision is not appealable.

      Responding to the Petition after the IPR is Instituted. Pursuant to a scheduling order set by PTAB, the patent owner is granted a time period from the date of institution to file a Response and an optional motion to amend the claims.  The patent owner may have, for example, about three months from the date of institution to file the Response.  The Response may argue that the one or more claims at issue are valid, or that the petitioner has not proven that the claims are invalid by a preponderance of the evidence.  The Response is the patent owner’s only formal opportunity to respond to the allegations of invalidity in writing.

      After the patent owner files the Response, the petitioner is granted a time period to file a Reply to the patent owner’s response, and, if applicable, a response to the patent owner’s motion to amend the claims.  Typically, this time period expires six months after the date of institution.

      If the patent owner filed a motion to amend, and the petitioner opposed the motion to amend, the patent owner may have an additional time period after the Reply is filed to respond to the petitioner’s arguments against the amendment.  The patent owner is typically granted a month to file a response to the petitioner’s opposition.

      Discovery.  In support of the patent owner’s Response and the petitioner’s Reply, the parties are permitted to utilize the tools of routine discovery without permission from the Board.  For example, one party may depose any of the other party’s declarants.  In order to obtain information outside of the scope of routine discovery, however, permission from the Board must be granted in advance.

      Oral Hearing. An oral hearing is optional, and available on request by the parties.  If an oral hearing is requested, it is scheduled in advance by the Board.  The oral hearing is conducted in-person at a USPTO location, with the panel of judges assigned to the IPR in attendance.  Representatives for the patent owner and the petitioner are allowed to present their arguments, and may be questioned by the panel.  No witness testimony is permitted at the oral hearing.

      Final Decision.  After the oral hearing, the Board must issue a final written decision within twelve months of the date of institution.  The Board may decide to cancel one or more of the claims challenged in the IPR proceeding based on the arguments presented by the petitioner and the patent owner.  The Board’s final written decision is appealable to the Federal Circuit.

      The USPTO has published the following flow-chart summarizing an example IPR schedule:

    Compared to other USPTO proceedings, IPR is relatively fast, but costly.  No fee discounts are available for small or micro entities.  However, a full IPR proceeding generally costs less than a full trial in federal court.  In 2017, the USPTO charged petitioners with the following fees:

    Fee (USD)
    IPR Request Fee – Up to 20 Claims 9,000
    IPR Post-Institution Fee – Up to 15 Claims 14,0000
    IPR Request Fee For Each Claim in Excess of 20 200
    IPR Post-Institution Fee for Each Claim in Excess of 15 400

    If you are interested in filing a petition for IPR, or if someone else has filed a petition for IPR of one of your patents, please contact us for more information.

    1. Article on Post-Grant Review: “The Post-Grant Review Process”

    Post-Grant Review (PGR) is an adversarial proceeding conducted before the USPTO to determine whether an issued patent is valid.  It is very similar to Inter partes Review (IPR) procedurally (for more information on IPR, see our article), but permits the assertion of more possible grounds of invalidity than IPR.  As a result, PGR is the USPTO’s closest equivalent to litigating the issue of invalidity.  PGR, however, has limitations that may impact whether it is a preferable alternative to litigation or an available alternative to IPR.

    The Petition. A petitioner can request that the USPTO institute PGR of an enforceable patent by filing a petition challenging the validity of one or more claims of the patent with the Patent Trial and Appeals Board (PTAB).  The petition must be filed within 9 months of issuance (or reissuance).  A successful petition must show a panel of three PTAB administrative law judges that the challenged claims are more likely than not to be invalid.

    Unlike Inter partes Review (IPR), in PGR, a petitioner can raise nearly any ground of invalidity that is available in litigation.  The petitioner may argue that the claims are invalid based on grounds such as novelty, obviousness, written description, enablement, and indefiniteness.  However, the petitioner is not permitted to raise invalidity arguments based on best mode, and is not permitted to raise unenforceability arguments such as inequitable conduct.  PGR is therefore a close, but not perfect, analog to litigating patent invalidity before a federal district court.

    In general, PGR may only be used to challenge patents subject filed under the America Invents Act (AIA).[1]  That is, PGR is not available for most patents effectively filed prior to March 15, 2013.  Thus, most issued patents cannot be challenged under PGR.

    After the PGR petition is filed, the patent owner is permitted, but not required, to file a preliminary response.  A successful preliminary response will dispute the petition’s arguments, and convince the board not to institute PGR.

    Decision to Institute PGR. Within six months of the petition’s filing date, the PTAB panel will issue an institution decision that grants, grants in part, or denies the petition’s request to institute PGR.  A decision by a PTAB panel to not institute PGR is not appealable, but a request for reconsideration on any ground may be filed by the petitioner or the patent owner.

    The PGR Process. Because the PTAB must issue a final written decision on the PGR within one year of the decision to institute absent a showing of good cause, the schedule for a PGR proceeding is relatively crowded.  The patent owner is typically provided three months after the institution decision to file a response to the petition.  The petitioner subsequently has about three months to submit a reply to the patent owner’s response.

    The patent owner has the option to file a motion to amend any claims under review.  Typically, the motion to amend must be filed with the patent owner’s response after review is instituted.  The petitioner may file a response to the motion to amend.  The petitioner may be given, for example, an additional month after the deadline to submit the reply in order to respond to the motion to amend.

    Thereafter, both the patent owner and the petitioner may use the tools of routine discovery without prior authorization from the board.  For example, the petitioner may depose any declarants proffered by the patent owner in the patent owner’s response.

    As with litigation in federal court, the parties may dispute the admissibility of any evidence by filing motions to exclude.  The Federal Rules of Evidence apply to all evidence presented in the PGR.  However, additional admissibility restrictions apply to PGR proceedings that may not apply to a federal district court.

    The panel may hold an oral hearing on request of the petitioner or the patent owner.  If requested, the oral hearing is scheduled after the parties have opportunities to file motions to exclude.

    Final Decision. The panel will then issue a final decision on the PGR.  The final decision may also include a decision on any motions to exclude filed by the parties.  Typically, the final decision will be issued within one and a half years of the petitioner’s filing date, making PGR a relatively quick option for invalidating claims on the merits.

    The following flow-chart, published by the USPTO, summarizes a sample timeline for a PGR proceeding:

    PGR has its drawbacks.  PGR’s limited applicability, and relatively high cost can be unattractive to some potential petitioners.  In 2017, the USPTO charges the following fees:

    Cost (USD)
    Request Fee – Up to 20 Claims 12,000
    Post-Institution Fee – Up to 15 Claims 18,000
    Request Fee for Each Claim in Excess of 20 250
    Post-Institution Fee for Each Claim in Excess of 15 550

    Challenging a patent using PGR is therefore significantly more expensive than challenging a patent using IPR.  However, a PGR may nevertheless be less expensive than litigating patent validity in a federal district court.

    If you are interested in filing a petition for PGR, or defending your patents against a petitioner in PGR, please contact us for more information.