The America Invents Act of 2011 (the “AIA”) created opportunities for forward thinking patent holders and challengers. Because we are a team of attorneys with both exceptional patent prosecution and patent litigation skills, we can guide patent holders and challengers in this new post-grant proceedings world. Our litigation and prosecution experience enables us to provide strategic advice in selecting one type of proceeding versus another in conjunction with, or as an alternative to, litigation. Strategic counseling in this area requires careful consideration of differing standards of proof, the different nature and background of fact-finders, and the impact of any estoppel positions.
We have successfully represented clients seeking to invalidate patents, as well as patent holders defending a post-grant proceeding. We counsel clients in all aspects of reexaminations, including when to file them, which to file, and whether to use reexaminations offensively or defensively. Our experience covers the range of U.S. Patent and Trademark Office post-issuance proceedings.
Inter Partes Review (IPR)
Inter partes review is a trial proceeding conducted by the Patent Trial and Appeal Board (the “PTAB”) 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.
The IPR process begins when a patent challenger files a petition for review after the later of either (1) nine months after the grant or re-issuance of the patent, or (2) the termination of any post grant review.
Post Grant Review (PGR)
Post grant review is a new trial proceeding conducted at the PTAB to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). The PGR process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition.
A PGR can be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the PTAB will be issued within 1 year (can be extended 6 months for good cause).
Covered Business Method Patent Review (CBM)
Transitional Program for Covered Business Method Patents Review is a proceeding to review the patentability of one or more claims in a covered business method patent. CBM proceedings employ the standards and procedures of a PGR, with certain exceptions. For example, for first to invent patents, only a subset of prior art is available to support the petition. The petitioner must have been charged with infringement of the patent in question.
The AIA did not change the process for ex parte reexaminations. If a substantial new question of patentability is raised, the USPTO will grant a request for an ex parte reexamination. While anyone at any time can request an ex parte reexamination, only the patent owner may participate in the reexamination process. The basis for requesting the reexamination must be limited to patents or publications not previously considered when the patent was originally examined.
The Supplemental Examination procedure allows a patent owner to request Supplemental Examination of a patent to permit consideration, reconsideration or correction of information that may be relevant to the validity of the patent. This may or may not lead to reexamination of the patent, but in either case it precludes a later charge inequitable conduct for failure to have informed the patent office of that information.
A derivation proceeding is a new trial proceeding conducted at the PTAB to determine whether (1) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (2) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as an earlier application’s claim to the invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application.