Patent Office Post-Grant Proceedings

Patent Office Post-Grant Proceedings

Overview

Navigating the America Invents Act

The America Invents Act (AIA) of 2011 created new procedures to challenge patents in the United States Patent Office (USPTO). Schiff Hardin’s seasoned patent litigators, trial lawyers, and USPTO-licensed lawyers are exceptionally well positioned to guide clients through the strategies and tactics provided by the AIA.

The new AIA procedures include Inter Partes Review, Post-Grant Review, and Supplemental Examination.

Inter Partes Review (IPR)

An IPR is a trial-like proceeding conducted before the Patent Trial and Appeal Board (PTAB) in which a petitioner–not the owner of the patent–may request the PTAB to review validity of patent claims based on patents and printed publications.

To invoke an IPR, a petition must be filed after the later of nine months after patent grant (or reissue) or end of Post-Grant Review, but not greater than one year after the petitioner being served with an infringement complaint by the patent owner. Also, the IPR petition must establish that there is a reasonable likelihood that the petition would prevail as to at least one of the challenged claims.

If the PTAB institutes the IPR proceeding, the USPTO guidelines state that a final decision will be issued issue within a year, although it is extendable by six months for good cause.

Post-Grant Review (PGR)

While PGR is similar to IPR, the possible grounds for challenging patentability are broader –including any grounds that are available for an invalidity defense. Thus, in addition to patents and printed publications, PGR can be sought to challenge patentability based on evidence of public use, on-sale activity, or other public disclosures. Moreover, PGR can be sought based on an alleged lack of compliance with written description, enablement, or patent eligibility requirements.

To invoke PGR, a petition must be filed within nine months after patent grant (or reissue). Also, the PGR petition must establish that at least one challenged claim is more likely than not to be found unpatentable, or that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.

PGR applies only to patents issuing from applications containing at any time, at least one claim having an effective filing date of March 16, 2013 or later.

As with IPR, the USPTO guidelines state that a final decision in a PGR will be issued issue within a year, although it is extendable by six months for good cause.

Covered Business Method Review (CBMR)

CBMR allows a petitioner to challenge the patentability of a covered business method patent.

A “covered business method patent” is one 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, except that the term does not include patents for technological inventions.” Thus, the threshold inquiry for CBMR involves two prongs, whether the patent (i) is directed to a “financial product or service,” and (ii) is not directed to a “technological invention.”

The possible grounds for challenging patentability are similar to PGR — including any grounds that are available for an invalidity defense, such as patent eligibility requirements.

Unlike IPR and PGR, a CBMR petitioner must show either that it has been sued for infringing the patent, or that suit has been threatened.

To invoke CBMR, a petition may be filed any time except for when PGR is available, is not limited to one year after service of a complaint like an IPR, but must be filed before CBMR sunsets on September 16, 2020. Also, the CBMR is similar to PGR in that the petition must establish that it is more likely than not that at least one challenged claim is unpatentable, or that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.

As with IPR and PGR, the USPTO guidelines state that a final decision in a CBMR will be issued issue within a year, although it is extendable by six months for good cause.

Supplemental Examination

Supplemental Examination allows a patent owner to request, at any time during the life of a patent, additional examination to consider, reconsider, or correct information believed to be relevant to a patent. The PTAB will grant the request if the request sets forth a substantial and new question of patentability (SNQ), and if so, the PTAB orders Ex Parte Reexamination of the patent. Supplemental Examination is primarily intended to provide the patent owner with a procedure to cure issues that might otherwise make a patent subject to inequitable conduct allegations during litigation.

Creative, Effective Counsel

These new AIA proceedings present strategies that should be considered by patent owners and patent challengers, often in conjunction with ongoing or potential patent litigation in U.S. district courts. Each of the proceedings before the PTAB and district courts presents advantages and disadvantages based on different burdens of proof, standards for claim construction, and scope of discovery. Our team is familiar with this landscape and has leveraged years of patent experience to provide creative and effective advice.