Panitch Schwarze | Challenging a Granted U.S. Patent

By: Dennis J. Butler

A granted U.S. patent can be challenged through various administrative procedures under U.S. patent law at the U.S. Patent and Trademark Office (“USPTO”), which are designed to provide a faster, cheaper alternative to challenging the patent in a federal court litigation. The most common administrative procedures include ex parte reexamination, inter partes review and post grant review.

1. Ex Parte Reexamination

Ex parte reexamination allows a third party or the patent owner themselves to request that the USPTO reexamine a granted U.S. patent. Ex parte reexamination is available when new prior art is discovered that raises a “substantial new question” (“SNQ”) of patentability to the granted patent. The procedure is ex parte, meaning only the patent owner and an examiner assigned by the USPTO interact during the majority of process. The lack of involvement of the requester after the ex parte reexamination request is granted is one reason third parties may be reluctant to use this process. Patent owners often use the process to confirm the patentability of the patent over newly uncovered prior art references.

The ex parte reexamination process starts when a third party or the patent owner files a request for reexamination with the USPTO. The request must be based on prior art patents or printed publications that call into question whether at least one claim of the patent, as originally granted, is invalid for lacking novelty or otherwise being obvious. The U.S. patent examiner reviews the request to determine if an SNQ is raised by the request. If an SNQ is raised, the reexamination request is granted and if an SNQ is not raised, the request is denied.

Process & Fees:

• Initiated by: Filing of a request for reexamination by a third party or patent owner.
• USPTO Action: Within three months of the request, the USPTO decides whether to grant or deny the request.
• Reexamination Proceedings: After initiation, the reexamination process typically takes two plus years.
• Final Decision: Once reexamination is complete, the USPTO issues a final decision regarding whether the challenged claims are patentable in their original form, patentable as amended or canceled.
• Filing Fees: The filing fees for an ex parte reexamination request are typically between approximately $1,400 and $14,000 depending on the size of the request (streamlined or non-streamlined), size of the requester, and number of claims challenged.

2. Inter Partes Review

Inter partes review (“IPR”) allows a third party to challenge a patent’s validity by providing new prior art patents or publications that likely invalidate at least one claim of the patent. Unlike ex parte reexamination, IPRs involve participation of the patent owner, the requester (referred to as a petitioner) and a panel of Patent Trial and Appeal Board (“PTAB”) judges throughout the entire proceeding. The petitioner and the patent owner submit competing written arguments, and there is typically an oral hearing in front of the PTAB judges that will ultimately determine the patentability (or not) of the challenged claims.

To initiate an IPR, the requesting party submits a petition to the USPTO along with evidence of prior art patents and publications that are believed to invalidate challenged claims of the patent. The PTAB judges then determine if the petition demonstrates that there is a reasonable likelihood that at least one of the challenged claims is unpatentable (> 50%).

Timeline:

• Initiated by: Third party filing of a petition for IPR, accompanied by evidence of prior art, including patents and printed publications, that demonstrate a reasonable likelihood that a challenged claim is unpatentable.
• Patent Office Action: The Panel typically decides within about six months from the filing of the petition whether to institute an IPR.
• IPR Proceeding: An IPR typically takes around 1½ years from the petition filing to the PTAB’s final written decision.
• Filing Fees: The filing fees for an IPR petition are approximately $24,000 plus an approximately $28,000 fee if the IPR is instituted, and additional fees for challenged claims in excess of 20.

3. Post Grant Review

Post grant review (“PGR”) is a more expansive procedure that allows a third party to challenge a U.S. patent’s validity based on additional grounds compared ex parte reexamination or IPR. In addition to challenging a patent based on prior art patents and printed publications, PGR permits challenges based on lack of written description, lack of enablement, indefiniteness or lack of patent eligible subject matter. In addition, the petition for a PGR must be filed within nine months of the grant date of the patent.

A third party can initiate a PGR by filing a petition with the USPTO, which must show that it is more likely than not that the petitioner would prevail in invalidating at least one of the challenged claims of the patent. Similar to the IPR process, the patent owner, third party challenger and panel of PTAB judges participate in the proceedings, including competing written arguments and typically an oral argument. The panel makes a final decision following the briefing and arguments.

Timeline:

• Initiated by: The third party petitioner files a petition for a PGR, which must be filed within nine months of the patent’s grant or reissue date.
• Patent Office Action: The panel typically decides within about six months of the petition whether to institute a PGR.
• PGR Proceeding: Like IPRs, a PGR typically takes around 1½ years from the filing of the petition to the PTAB’s final written decision.
• Filing Fees: The filing fees for a PGR petition are approximately $25,000 plus an approximately $35,000 fee if the petition is granted, and additional fees for challenged claims in excess of 20.

Comparison of the Procedures:

Conclusion:

The three main administrative procedures to challenge a U.S. patent, including ex parte reexamination, IPRs and PGRs, offer distinct advantages and drawbacks depending on the situation. Ex parte reexamination is often utilized by the patent owner to confirm patentability over a prior art reference that arises after grant or by a third party when budget is limited. IPRs and PGRs are expensive, adversarial proceedings pursued by third parties to challenge granted U.S. patents as an alternative to even more expensive federal court litigation. Choosing the right proceeding or deciding not to challenge a patent in an administrative proceeding involves consideration of the specifics of the patent, the desired outcome, the known prior art, budget, timeline constraints and additional factors.

Compliments of Panitch Schwarze Belisario & Nadel LLP – a member of the EACCNY