The New Post Grant Challenge Environment
There are now three ways to challenge a newly issued patent in the United States Patent Office.
EX Parte Examination
Historically the primary challenge a 3rd party could use against an issued patent was the Ex Parte Examination. In this approach a 3rd party submits prior art after a patent has issued to convince an Examiner to revoke the patent. It was relatively cheap ($2,520 to file up until Sept 16, 2012), and allowed 3rd parties to attempt to invalidate patents without having to go to court. The prior art that could be submitted to the Examiner was limited to patents and printed publications. That option is still available under the new rules but the USPTO has decided to discourage it. They did this by raising the filing fee from $2,520 to $6,000. That is discouragement to small companies and independent inventors.
The USPTO is now promising to make a decision on these petitions within 3 months.
An additional wrinkle here is that if the 3rd party has also pursued one of the other ways to challenge (to be described below), and a decision has been reached, then an Ex Parte Examination cannot be used.
The 3rd party can remain anonymous by using a registered patent attorney. In such a case, the registered patent attorney must now certify that the real party in interest is not stopped from filing the request.
Post Grant Review
This is new under the new rules. In a Post Grant Review, the 3rd party can submit prior art references and argue that the patent should not have been allowed as being obvious or anticipated (i.e.: violate sections 103 or 102). That is similar to the way patent reexaminations have always been conducted. However, what is completely new and especially important is that the 3rd party may also argue that the claims are to non-statutory subject matter (i.e.: violate section 101), or that they are vaguely worded or indefinite (i.e.: violate section 112). In addition, the petitioner can also introduce evidence that the patent should not have been allowed because the owner violated an on-sale or public use bar (i.e.: show that the invention was in the public realm for more than one year prior to the filing of the application). Thus, this new procedure will open a wealth of opportunities to challenge issued patents without having to go to federal court.
The cost for this petition is $12,000. Also this review must be submitted within 9 months of the issue date. And that is just the beginning of the costs. The Patent Office promises that the whole Post Grant Review process will take no more than one year (after first taking no more than 3 months to decide whether to approve the Petition and commence the process). The patent owner will then have 3 months to file an (optional) reply. After that, the Patent Office and the Petitioner have discovery, followed by an oral hearing and final decision in front of three judges. The patent owner may file one motion to amend the claims (but only after conferring with Board). Importantly, the lead counsel handling this procedure (with discovery, motions and cross-examination), must be a registered patent attorney. All of the rules for conducting these reviews are too complicated to discuss here. Consult a good attorney before you start down any of these paths.
Inter Partes Review:
In many respects, Inter Partes Review is similar to Post Grant Review (discussed above). It also is new a Patent Office procedure similar to a trial entailing discovery, motions and cross-examination.
The biggest two differences between the two procedures are: (1) an Inter Partes Review can’t be filed until 9 months after the patent has issued; and (2) it only can be used to challenge the patent on the grounds of anticipation or obviousness (i.e.: sections 102 and 103). Thus, you can’t challenge the patent on the grounds of non-patentable subject matter or vagueness (i.e. sections 101 or 112) using this process. Also, only printed publications and patents can be considered. Thus, its scope is somewhat limited.
This one is a little cheaper than the Post Grant Review ($9,000). But not much. In response to the high filing fee, the Patent Office provides a full trial type procedure that is heard by three judges (i.e.: not by an examiner). Importantly as well, since this is an inter partes procedure, the parties may actually decide to settle the case prior to the judges’ final decision. Once again, the legal costs from the attorney fees you will entail to prepare and fight this review will be very high also.
Should
you pursue any of these? I suspect most
small companies and especially independent inventors would make that decision
very quickly in light of the expense. The only likely participants will probably be large companies
that have already been sued for infringement and are hoping to use these
approaches to delay and defer the high cost of full litigation.
Issued Patent Challenges
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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.
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