Patent Reexamination & Reissue
The U.S. Patent & Trademark Office provides a venue for correcting or challenging issued patents. This can be part of a strategy to re-validate a patent prior to licensing or litigation, or can help a patent owner or defendant determine whether patent was granted in error.
USPTO Corrective Proceedings
Beginning September 16, 2012, a patent owner may request at any time during the life of a patent a supplemental examination so that the Office can consider, reconsider, or correct information believed to be relevant to the patent.
The patent owner may present any information believed to be relevant to the patent. The information is not limited to patents or printed publications, but instead may include information concerning any ground of patentability, i.e., patent eligible subject matter, anticipation, obviousness, written description, enablement, best mode, and indefiniteness.
• Used for correcting an error made without any deceptive intention during the patenting process that is deemed to render a patent wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patent owner claiming more or less that the patent owner had a right to claim
• Similar to original patent prosecution proceedings
• Claim broadening is only available if initiated within two years of the date of the issuing of the original patent.
Ex partes Patent Reexam
• Used to reexamine an issued U.S. patent on the basis of prior art
• The PTO first determines whether the submitted patents and/or printed publications raise a substantial new question (SNQ) of patentability compared to what was considered in the original examination of the patent
• If the PTO makes that finding, the PTO then reexamines the claims of the issued patent and results in the claims of the issued patent being confirmed, amended or cancelled
• A typical reexamination takes about two to three years, and the initial determination as to whether a substantial new question of patentability exists is usually made within three months of filing
• Reexamination can be requested at any time during a patent litigation
• Reexaminations generally cost less than patent litigation
• Reexamination can be used to strengthen a patent's validity prior to litigation or to preempt an attack on a patent
• Defensively, reexamination presents an opportunity to defer litigation costs while challenging a patent's validity or to gain leverage during licensing negotiations. Even if litigation commences, a successful defensive reexamination request early in the case can result in a stay of the infringement litigation, which facilitates settlement and licensing discussions while minimizing and/or deferring attorneys fees and expenses.
USPTO Adversarial Proceedings
Inter Partes Review
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. For first-inventor-to-file patents, inter partes review process begins with a third party (a person who is not the owner of the patent) 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. The patent owner may file a preliminary response to the petition. 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 year (extendable for good cause by 6 months). The procedure for conducting inter partes review took effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.
Patent Post Grant Review
• Post Grant Review (PGR) of a Patent provides third parties with a mechanism for addressing a patent granted in error.
• PGR is available to any patents having an effective filing date that is one or after March 16, 2013
• PGR request must be made within nine months of the issuance of the patent
• The grounds that may be raised include most grounds for invalidity of the patent, except for failure to comply with the best mode requirement which is no longer part of U.S. law
• The PTO first determines whether it is more likely than not that at least one of the claims challenged is unpatentable; or whether the request raises a novel or unsettled legal question that is important to other patents or applications
• If the PTO makes the new finding, the PTO then reexamines the claims of the issued patent
• The reexamination procedure results in the claims of the issued patent being confirmed, amended or cancelled
• Discovery procedures are available on a limited basis to evidence directly related to factual assertions advanced by either party (Admissions, Production of Documents, Interrogatories, Depositions)
• Post Grant Review will generally cost less than patent litigation because a Post Grant Review proceeding does not consider any of the other issues relating to patent infringement or damages
• Post Grant Review presents an opportunity to establish validity or invalidity of the patent without the expenses involved in considering infringement and damages
• Using a Post Grant Review to obtain a litigation stay may still be available to those defending an allegation of infringement, which facilitates settlement and licensing discussions while minimizing and/or deferring attorneys fees and expenses.