Post Grant Proceedings
The America Invents Act (“AIA”) made sweeping changes to post-grant patent proceedings. The AIA created new opportunities for clients to strengthen an issued patent, or challenge a competitor’s patent without the need for more expensive, time-consuming litigation.
Meunier Carlin & Curfman has represented both patent owners and challengers in these new proceedings. We can use our experience to effectively and efficiently represent you in these proceedings.
Inter Partes Review
Inter partes review (IPR) is an alternative to litigating patent validity in federal courts and is limited to validity challenged based on published references. Challengers fully participate in the trial process before a panel of administrative law judges from the Patent Trial and Appeal Board (PTAB). The review proceedings allow for discovery by the parties. Challengers are prevented from raising any issue which was or reasonably could have been raised during the IPR in any further proceedings before the USPTO, International Trade Commission, or federal courts. Our firm has counseled and represented patent owners and petitioners in these proceedings and has experience with the many issues associated with IPR practice.
Post-grant review (PGR) is akin to opposition practice in Europe and elsewhere and is another alternative to litigating patent validity in federal courts. Unlike IPR proceedings, PGR proceedings allow validity challenges based on any ground that can be litigated in federal court. PGR petitions can only be filed on patent applications that are subject to AIA rules and must be filed within nine months from a patent grant or reissue. Like IPR proceedings, challengers are prevented from raising any issue which was or reasonably could have been raised during the PGR in any further proceedings before the USPTO, International Trade Commission, or federal courts. There are only a few patents currently that can be challenged using PGR practice, but our firm has already begun to counsel clients on these proceedings.
Ex parte reexamination
The AIA did not change the ex parte reexamination process. Ex parte reexamination is the most inexpensive way for a challenger to attack a patent using patents or other printed publications. The patent owner can also file an ex parte reexamination to have its patent reconsidered. If a request for ex parte reexamination is granted, the review process involves only the PTO and the patent owner and is not conducted before the PTAB. Unlike in inter partes reviews, there is no estoppel and the same patent challenges can be brought in a future proceeding.
The AIA created supplemental examination as a method for the patent owner to have the PTO reconsider a patent based on any information that could affect the validity of the patent. Thus, supplemental examination is not limited to printed publications like ex parte reexamination. Supplemental examination can be filed at any point while the patent is enforceable. If the request is granted, the supplemental examination proceeds as an ex parte reexamination. If the request is denied, the patent owner receives a supplemental examination certificate.
The patent owner can file a reissue proceeding to correct an error in a patent. The patent owner can file a reissue to have a patent reconsidered based on any aspect of patentability. If the patent owner files the reissue proceeding within two years of the grant of the patent, the patent owner also has the possibility of broadening the claims of the patent. However, the patent owner cannot broaden the patent to cover subject matter that was the surrendered during prosecution to overcome prior art. Multiple reissue applications can be filed for distinct and separate parts of the patent to be reissued. Reissues are conducted before a patent examiner and result in a reissued patent.