Patent Challenges
First, a patent challenge is not a lawsuit. At court if you hold a patent and find that someone is infringing your patent rights, or are doing business in a manner that infringes the rights of a patent holder you would go to court against each other in a lawsuit.(we could put a link here if we have an article on “the basic patent right”) The basic principle here is that you are not a party to a lawsuit, thus you are a 3rd party, and what you are doing here is challenging that the invention which has been granted a patent should not have under the patent office’s own rules.
Three Ways To Challenge A Newly Issued Patent
This article will discuss the 3 ways to challenge a newly issued patent
1. Ex Parte Examination
The most common way that a 3rd party can challenge a newly issued patent is the Ex Parte Examination. In an Ex Parte Examination the 3rd party submits prior art (insert link to terms of art) to try and convince the patent examiner to revoke the patent. The art that can be submitted is limited to other patents and printed publications. While this option is still available the patent office has looked to discourage the practice, by among other things more than doubling the filing fee for this action.
There are three other things to note about an Ex Parte Examination. First, the time to a decision from the USPTO on this type of action is 3 months. Second, if one of the other methods of challenging a patent (described below) are used and a decision is reached the 3rd party is precluded from using the Ex Parte Examination. And finally, a 3rd party can file an Ex Parte Examination anonymously by using a registered patent attorney, who will certify that the real party in interest is not stopped from filing the request.
2. Post Grant Review
The second way that a patent can be challenged is through Post Grant Review. This is a new method of challenge to a patent. This allows a patent to be challenged on an expanded number of grounds. While the patent can be challenged on for being already invented [section 102(link to term of art)] or obvious [103(insert link to term of art)] grounds like an Ex Parte Challenge under Post grant review a patent can be challenged for not being patentable subject matter -inventions cannot be abstract ideas- [a violation of section 101(insert link to term of art)] or vague or indefinite [section 112(insert link)] as well. These new grounds to invalidate a patent open up new opportunities for challenging patents without having to go to court.
The process to go through Post Grant Review is a little more involved. The 3rd party first files a petition to commence the process. The USPTO will issue a decision on that petition within 3 months, the patent owner then has 3 months to file an optional response. These 6 months are followed by a period of discovery (insert link to term of art) for the petitioner and the USPTO (link to term of art) concluded with an oral hearing in front of a panel of three judges. There may be a single appeal allowed by the board after the final decision. The petitioner in this type of action must be represented by a registered patent attorney.
The last type of review discussed in this article is the Inter Partes Review. This, like the Post Grant Review is a new procedure not previously allowed by the USPTO. This also involves discovery, various motions and cross-examination. Of all the procedures available this one most resembles a trial.
There are two big differences between an Inter Partes Review and Post Grant review. The first is that an Inter Partes Review cannot be filed until nine months after the patent has issued, and the second is that it can only be used to challenge the patent on the grounds that the invention already exists, or that it is obvious. That means that you cannot challenge the patent on the grounds that the patent itself is vague (112), or that it is an abstract idea, not an invention (101). Like the Ex Parte Review only patens and printed publication can be used to support the violations of prior existence or obviousness.
This procedure is heard by 3 judges like the Post grant review, and just like a trial an Inter Partes Review can be settled between the patent holder and the 3rd party petitioner.
3. Inter Partes Review
The last type of review discussed in this article is the Inter Partes Review. This, like the Post Grant Review is a new procedure not previously allowed by the USPTO. This also involves discovery, various motions and cross-examination. Of all the procedures available this one most resembles a trial.
There are two big differences between an Inter Partes Review and Post Grant review. The first is that an Inter Partes Review cannot be filed until nine months after the patent has issued, and the second is that it can only be used to challenge the patent on the grounds that the invention already exists, or that it is obvious. That means that you cannot challenge the patent on the grounds that the patent itself is vague (112), or that it is an abstract idea, not an invention (101). Like the Ex Parte Review only patens and printed publication can be used to support the violations of prior existence or obviousness.
This procedure is heard by 3 judges like the Post grant review, and just like a trial an Inter Partes Review can be settled between the patent holder and the 3rd party petitioner.
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