McHale Slavin NewsletterMchale Slavin

APRIL 16, 2012

POST-GRANT REVIEW, INTER-PARTES REVIEW,
INTER-PARTIES REEXAMMINATION

         Effective September 16, 2012, the validity of an issued patent can be challenged using either post-grant review under 35 U.S.C. §321 or inter partes review under 35 U.S.C. §311. Post-grant review and inter partes review proceedings can be initiated by anyone “who is not the owner of a patent” by filing a petition with the United States Patent and Trademark Office (USPTO).  Post-grant review must be initiated within nine (9) months of the issuance of a patent or reissue patent, and permits any patentability issue to be raised, which can be based on any evidence.
          Post-grant review of a patent allows a petitioner to seek canceling, as unpatentable, one or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity), i.e., §§101, 102, 103, 112 (except best mode). The petition must demonstrate that it is more likely than not that the petitioner will prevail on at least one claim challenged or raises a novel question that is important to other patents or publications. Projected government filing fee is $35,800 (large entity) for addressing up to 20 claims.
          Inter partes review cannot be initiated until the later of nine (9) months after a patent or issuance of a reissue of a patent, or after the termination date of a post-grant review. Inter partes review replaces inter partes reexamination as an avenue for a third party’s patentability challenge effective September 16, 2012. Inter partes review is limited to the grounds of novelty or non-obviousness, §§102, 103 which is supported by patents or printed publications. A person who (a) is not the owner of the patent and (b) has not previously filed a civil action challenging the validity of a claim of the patent may file, accompanied by payment of a required fee and a petition to institute the patent review. The petition must demonstrate a reasonable likelihood that the petitioner will prevail on at least one claim challenged. Projected government filing fee is $27,200 (large entity) for addressing up to 20 claims.
        Inter Partes Reexamination is the current procedure by which a granted patent is reexamined by the USPTO Central Reexamination Unit. The Patent Act provides that a request for reexamination may be submitted by “any person,” which includes the USPTO Director. A threshold question for reexamination is whether the prior art raises a substantial new question of patentability of at least one claim. During reexamination, only prior patents and printed publications will be considered. The information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. Any request for inter partes reexamination filed on or after September 16, 2012, will not be granted. Proceedings for inter partes reexamination filed prior to September 16, 2012, will proceed to conclusion even if the proceedings last beyond September 16, 2012. Inter partes review replaces inter partes reexamination as an avenue for a third party’s patentability challenge effective on September 16, 2012. Fee structure is $8,800 (large entity) for addressing up to 20 claims.

By: Michael A. Slavin

Registered Patent Attorney