Patent Reexamination: Post-Grant & Inter Partes Review

The America Invents Act has changed how we look at patent reexamination. Post-Grant Review (PGR) and Inter Partes Review (IPR) are critical now. They help check if a patent is really valid, making sure intellectual property rights are substantial.

These reviews began on September 16, 2012. They allow people to challenge the patentability of issued patents thoroughly, and since then, this has become a big part of patent disputes.

The United States Patent and Trademark Office (USPTO) runs these reviews. They are checked by the Patent Trial and Appeal Board (PTAB). IPR looks at patentability using §§ 102 or 103, focusing on prior art. PGR looks at validity with a broader view against § 282(b)(2) or (3).

This new method aims to resolve disputes quickly, ideally in under a year. If needed, this time can be extended by six months.

The use of IPR and PGR is increasing. From 2011 to 2019, over 1,000 IPR cases were filed. PGR cases are also on the rise. But, the more traditional Ex Parte Reexaminations are less common now. This shows a move towards more thorough checks of patent validity.

Key Takeaways

IPR and PGR proceedings were put in place by the AIA to improve patent fights.
Inter partes review (IPR) focuses on judging patentability by examining prior art, mainly in §§ 102 or 103.
Post-Grant Review (PGR) looks at a broader range of invalidity claims under § 282(b)(2) or (3).
The USPTO wants to resolve these disputes quickly, ideally in a year, but with a possible extension of six months.
PGR filings are rising, showing they’re becoming more critical in intellectual property law.
Compared to IPR and PGR, traditional Ex Parte Reexaminations are now used less.
IPR or PGR cases can be expensive, reflecting their importance and complexity.

Understanding Patent Reexamination

Patent reexamination is crucial after patent issuance. It checks and confirms a patent’s initial decisions. This process is essential for owners to maintain and prove the value of their patents.

What is Patent Reexamination?

The USPTO reviews patents after they are granted. Anyone can ask for a review based on new information or old patents. This review is a key part of managing a patent’s legal strength.

History and Evolution of Patent Reexamination

After the 2011 AIA Act, we greatly changed how we reexamine patents. A new process called inter partes review (IPR) was born. Now, challenges to patents can be more detailed and take place sooner.

The AIA’s introduction of IPR and PGR improved the USPTO. It’s now more open, and updates come faster. This means patent rights can be defended more efficiently.

Ex parte reexamination peaked at nearly 800 in 2012 after the AIA.
Inter partes review is a fairer way to dispute patents than going to court directly.
Post-grant reviews wrap up in about 18 months, a much shorter time than traditional litigation.

Importance in Patent Strategy

It’s vital to use patent reexamination in strategy. You can protect your patents by taking part in reviews like IPR or PGR. It’s a way to keep your market edge sharp and your patents safe.

Capitalizing on good reexamination outcomes can change court cases in your favour. Knowing about derivation proceedings is also crucial. An intelligent approach to patent reexamination gives you a significant advantage.

Post-Grant Review: A Comprehensive Overview

The post-grant review (PGR) is part of patent reexamination. It was set up by the America Invents Act (AIA) on September 16, 2012. This process allows for a deep look into the patent’s ability to be patented.

Challenges can be made on various grounds, such as anticipation and obviousness. The PGR starts nine months after a patent is issued and usually ends 12 months from the scheduling order.

Process and Procedures

The PGR has three main steps: petition, discovery, and hearing. When a petition is made, the PTAB reviews it in six months. They check its likelihood of success.

If a trial begins, it goes straight to the hearing. This skips the usual reexamination by patent examiners.

Criteria for Filing

For a patent review, you must file within nine months of the patent being issued. The patent claims should not date back before March 16, 2013.

Challenges can be based on many things, like failure to meet requirements or public disclosures.

Estoppel Effects

Once the PGR ends, specific points can’t be brought up again in other proceedings. This rule applies to places like the USPTO and district courts. It shows how severe and complete the PGR is.

Comparison with Inter Partes Review

The PGR and inter partes review (IPR) aim to remove wrongly granted patents. Yet, they follow different rules. The PGR allows for broader challenges soon after a patent is issued.

IPR, in contrast, looks primarily at prior patents and published material. This has led to nearly 10,000 petitions since 2012.

Aspect	Post-Grant Review (PGR)	Inter Partes Review (IPR)
Grounds for Challenge	Anticipation, obviousness, patent eligibility, statutory requirements	Prior patents and publications
Timeframe to File Petition	Within 9 months from patent issuance	Any time after 9 months from patent issuance
Discovery Rights	Broader	Limited
Estoppel Effects	Extensive across USPTO, ITC, and district courts	Limited mainly to USPTO

Inter Partes Review: Key Features and Process

The inter partes review (IPR) lets others question a patent’s validity. This can be based on old patents or books. It’s a key way to deal with patent errors, especially when there’s a patent dispute.

Eligibility and Initiation

Anyone can start an IPR for a patent given out by September 16, 2012. But you must wait nine months after the patent’s given or after another review ends. This fixed time lets people focus on proving the patent isn’t correct.

The Petition Process

Filing a petition to start an IPR means showing why the patent might be wrong. This is done by pointing to old materials linked to the patent. Then, the patent owner can say their piece. The PTAB looks at everything and then decides if they’ll check the patent more closely. They usually do this with about 83.4% of cases, proving a strict review system.

Filing Deadlines

The IPR process moves quickly. A petition must be filed within one year of a patent infringement claim, keeping things on time with other legal actions. Patents in technology make up the most petitions, showing how important these cases are.

Final Determination and Appeals

After starting an IPR, the goal is to finish within 12 months, which can sometimes be longer. Compare this to the much slower IPX process, which takes about 36 months. Once a decision is made, anyone involved can appeal to a higher court in the US. This helps make sure everything is appropriately checked, keeping the system fair.

In conclusion, the AIA’s inter partes review is a quick and firm way to tackle patent mistakes. It helps ensure that patents are rightly given and protects everyone using them.

Patent Reexamination, Post-Grant Proceedings, Inter Partes Review: Key Differences and Impacts

It’s critical to know the differences between patent reexamination, post-grant proceedings, and inter partes review for a strong patent strategy. Each has its own timeframes, reasons to reject, and legal rules you must follow. These factors shape how you deal with patent issues and in USPTO dealings.

Timeframes and Deadlines

The deadline to start these proceedings depends on the type:

Ex Parte Reexamination: Can be asked for at any time the patent is in force.
Post-Grant Review (PGR): Should be requested within nine months of when the patent was given.
Inter Partes Review (IPR): File within twelve months of when the infringement lawsuit began.

It’s crucial to think about these deadlines when planning your patent strategy. You want to protect your patent as much as possible and avoid weak spots.

Rejection Grounds

The reasons a patent might be turned down are different in each process:

Ex Parte Reexamination: Looks at any vital question about whether the patent is still valid. It can be about new or old information.
PGR: Examines bigger topics like whether the description is clear, whether it can be used as the inventor intended, whether it was already made public, or whether it was sold.
IPR: This just looks at whether the idea was already out there or if it was an obvious next step based on known information.

Knowing these differences helps you plan how to defend or challenge a patent with your unique approach.

Legal Estoppel Implications

After these processes, the legal rules that stop you from doing something play a big part:

Ex Parte Reexamination: There’s usually no rule against trying again.
PGR: If those issues were decided in the review, you might not be allowed to try certain things again.
IPR: Like PGR, you might not be able to review certain issues again, depending on what the review says.

Consider what these rules mean to avoid legal dangers in the future. This will help you build a smart and lasting plan for protecting or fighting a patent.

Understanding these significant differences benefits both patent holders and those challenging patents. Knowing the rules well can lead to good outcomes, even with strict legal restrictions and risks of rejecting your patent.

Conclusion

To win patent disputes, it’s key to get the details of patent reviews right. Different types of reviews offer various winning tactics. They matter because they can change how strong or easy a patent is to protect. For example, 62% of bio/pharm IPR petitions from the ones bringing the invention forward were accepted. This shows how crucial it is for those inventors who want to prove a patent is wrong.

There’s also the Post-Grant Review, mainly for newer patents given after March 16, 2013. There’s only a 9-month chance to argue against these patents. The goal is to show that the patent shouldn’t have been given or to raise essential questions. This process allows for a deep look and lets patent owners offer new claims. This makes the patent world more dynamic.

It’s also vital to know about estoppel effects and the possibility of more checks through supplemental examination. These can strengthen your patent application strategy. Handling PGR, IPR, or ex parte reexamination well requires smart moves. The Patent Trial and Appeal Board deals with these checks. With more ex parte reexaminations, anyone involved with patents must keep up. They need to know how to best use these tools in intellectual property law.