The United States Patent Office (USPTO) conducts several different post-grant proceedings, which allow one to challenge another’s patent or to strengthen one’s own patent. Many of these proceedings are before the Patent Trial and Appeal Board (PTAB), and contain a separate set of rules for the proceedings, and can be viewed as quasi-litigation and/or quasi-prosecution. Kinney & Lange, with extensive background and experience in both litigation and prosecution, is in a unique position to assist clients with post grant proceedings. Kinney & Lange IP attorneys assist clients by both defending patent owners, and by initiating proceedings on behalf of an interested party. Post-grant proceedings are often more cost-effective than litigation, and may obtain the same desire result. Patent Office trials may be used instead of litigation, or in some cases, concurrently with litigation.
Under the America Invents Act (AIA), several new options were presented for challenging or modifying existing patents, including:
- Post Grant Review (PGR): PGR proceedings are available for patents that have been filed after March 15, 2012. The proceeding must be initiated within 9 months of issuance of the patent. PGR allows anyone except the patent owner to challenge the patent on almost any grounds of validity. The proceeding does allow for the patent owner to respond and participate in the proceeding.
- Inter Parties Review (IPR): IPR allows for anyone other than the patent owner to challenge the validity of a patent. IPR is only allowed after nine months from issuance, and has more limited grounds for the validity challenge. Additionally, IPR is not available to a party that has initiated a challenge to the patent in court, but may still be utilized by a party in litigation so long as the party challenging validity did not initiate the litigation. IPR allows for both parties to participate in the proceeding, and allows for the dismissal of the proceeding upon settlement of the dispute between the parties.
- Supplemental Exam: Supplemental examination of granted patents is allowed for patent owners. The proceeding allows for the patent office to consider, reconsider, or correct information that may be relevant to the granted patent. Similar to PGR, the proceeding may focus on almost any grounds of validity, including challenges under 35 U.S.C. §112. The proceeding is ex parte, and may be used to help avoid inequitable conduct claims in litigation.
- Covered Business Methods Proceeding: A party charged with infringing a patent that qualifies as a Covered Business Method may initiate a proceeding with the USPTO. Covered Business Method patents are those that relate to administration, practice, or management of financial products and services. The proceeding is similar to IPR, and are utilized when there is a reasonable likelihood that at least one challenged claim would be found invalid.
In addition to the new proceedings, several long-standing proceedings are also still available through the USPTO, including:
- Ex Parte Re-examination (EPR): The AIA left the existing EPR proceedings generally intact with a few small modifications. EPR is available to anyone to request, including the patent owner. However, if requested by a third party, only the patent owner and the USPTO are allowed to participate in the proceeding. The standard for instituting EPR is that there is a substantial new question of patentability based on a patent or printed publication.
- Reissue: Reissue proceedings may be utilized to correct errors in a patent. The AIA eliminated the requirement that the error be without “deceptive intent”, thus making the proceeding easier to initiate. A reissue request is initiated by a patent owner, and may be initiated at any time except for a broadening reissue, which must be initiated within two years of patent issuance.
Several other proceedings also exist, such an Interferences, but most will sunset in the coming years and some of those proceedings are only available to applications filed prior to March 16, 2013. Kinney & Lange patent attorneys will gladly consult with anyone who is in litigation, or is contemplating litigation, to review if a post-grant proceeding will be a good alternative or addition to the litigation strategy. For more information on litigation services, see our Litigation page.
For information on trademark post-registration proceedings, such as opposition and cancellation proceedings, see our Trademarks page.