Post-Grant Proceedings

Question 1

Applicable Dates

Answer 1

1. Inter Partes and method for business patents is available for any patent effective 9/16/12 regardless of the issue date.
2. Post-Grant Review proceeding only affects patents that have an effective filing date on or after 3/16/13 (i.e. under the new first to file rules).

Question 2

Grounds for Challenging: Inter Partes Review vs. Post Grant Review

Answer 2

Inter Partes Review: Can only challenge based on 102 or 103 and only using patents, published patent apps, printed publications.

Post-Grant Review: Any invalidity ground, including, 101, 102, 103, 112 (Except best mode).

Question 3

Standard for Inter Partes Review

Answer 3

“Reasonable likelihood” petitioner will succeed on at least one challenged claim.

Question 4

Standard for Post Grant Review

Answer 4

More likely than not that at last one claim is unpatentable.

Question 5

Standard for Covered Business Method

Answer 5

1. More likely than not that at least 1 claim is unpatentable.
2. Petitioner sued or charged with infringement.

Question 6

Timing of Inter Partes

Answer 6

A petition for inter partes review may be filed after the later of:

(i) Nine months after the grant of a patent or issuance of a reissue of a patent; or
(ii) If a post-grant review is instituted, the date of the termination of that post-grant review.

NOTE: A petition for inter partes review may not be filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

Question 7

Requirements for Inter Partes Review

Answer 7

A petition for inter partes review may be considered only if the following conditions are met:

1. Petition must be accompanied by payment of the fee;
2. Petition must identify all real parties in interest;
3. Petition must identify, in writing and with particularity: (i) Each claim challenged;
   (ii) Grounds on which the challenge to each claim is based, and (iii) The evidence that supports the grounds for the challenge to each claim, including:
   Copies of patents and printed publications that the petitioner relies upon in support of the petition; and
   Affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.
4. Petition must provide such other information as the Director may require by regulation; and
5. Petitioner must provide copies of any of the required documents to the patent owner or, if applicable, the designated representative of the patent owner.

Question 8

Timing of Determination by Office to Institute Inter Partes Review

Answer 8

The Office must determine whether to institute an inter partes review within three months after:

(i) Receiving a preliminary response to the petition; or
(ii) If no such preliminary response is filed, the last date on which such response may be filed.

Question 9

Burden of Proof for Inter Partes Review

Answer 9

Petitioner must prove by preponderance of the evidence unpatentability.

Question 10

Timing of Post-Grant Review

Answer 10

Must occur within nine months after the date of the grant of the patent, or of the issuance of a reissue patent.

Question 11

Estoppel for Post-Grant and Inter Partes Review

Answer 11

Same for both, namely, estopped on any ground that the petitioner “raised or reasonably could have raised during that review.”

WARNING: As with inter partes review, watch out for ITC. There will be estoppel at ITC, but the ITC is not a Federal Court, meaning that statements made at the ITC by the patent owner cannot be submitted as a third-party issuance submission.

Question 12

Can you appeal a decision by the director on whether to initiate a post-grant proceeding?

Answer 12

No. Decision on whether to institute is final and not appealable.

Question 13

Who can file for an Ex Parte Reexamination?

Answer 13

Anyone, including patent owner.

Question 14

Standard of Review for Ex Parte Reexamination

Answer 14

Substantial New Question of Patentability

Question 15

What prior art can be used in ex part reexamination?

Answer 15

Patents and printed publications only.

Question 16

Legal Estoppel for Ex Parte?

Answer 16

No legal estoppel.

Question 17

Requirements for request for reexamination

Answer 17

i. A statement pointing out each substantial new question of patentability;
ii. Identification of every claim for which reexamination is sought, and a detailed explanation applying the art to the claims;
iii. A copy of every patent or publication relied upon;
iv. A copy of the specification and claims with two columns per page on one side only; and
v. A certificate that the patent owner has been served if filed by someone other than the patent owner.

Question 18

Timing of Ex Parte Reexamination

Answer 18

Can request for any unexpired patent, and until six years after the patent has expired, provided the fee is paid and formal requirements complied with.

Question 19

When can appeals from PTO decision go to Court of Appeals for the Federal Circuit?

Answer 19

Only after 11/29/99 can they go to CAFC.

Before that appeal goes to the local district court.

Question 20

Can new claims be added in ex part?

Answer 20

Yes, but claims can never be broadened.

Question 21

Are continuations allowed in ex parte?

Answer 21

No. Reexamination is not an application so no continuations are permitted.

Question 22

Who can appeal a final rejection in an ex parte reexam?

Answer 22

A final rejection of the examiner can be appealed like a normal application by the patent owner, but not the third party requestor.

Question 23

Can ex parte reexam be revived?

Answer 23

Yes, but only if it was unintentional.

Question 24

Extensions available in ex parte?

Answer 24

Yes, but only for cause. No automatic extensions.