Ex-Parte Reexam vs. Inter-Partes Reexam vs. Post-Grant Review
Suppose you’re running a business using certain methods or technological devices, and suddenly a patent is granted that threatens your operations. You believe the patent to be at least partially invalid based upon prior patents or printed documents, and you weigh your options for challenging the newly granted patent.
One way is to file a declaratory judgment action in federal district court seeking to invalidate the patent. This type of legal action, however, is costly and time consuming. Fortunately, there are options for challenging a patent within the U.S. Patent and Trademark Office (USPTO) system.
There are now three popular avenues for a USPTO-based patent challenge: an ex-parte reexamination, an inter-partes review (IPR), and a post-grant review (PGR). The ex-parte reexamination is often used by those who have seen their claims rebuffed in an IPR.
If your business is facing challenges in its operations because of a recently granted patent and you believe you can challenge that patent based on prior patents or published materials, contact the patent attorneys at COFFYLAW, LLC. The firm can assess your situation, determine if you have enough information to pursue a reexam, IPR, or PGR, and then help you file and pursue your action.
With offices in New Jersey and New York, COFFYLAW represents clients across the nation.
What Is an Ex-Parte Reexamination?
Prior to the enactment of the America Invents Act (AIA) of 2012, ex-parte reexaminations were the primary vehicle for challenging a recently granted patent. The AIA changed the ground rules for challenges. What used to be known as an inter-partes reexamination became an inter-partes review. The AIA also introduced the post-grant review, which became available in 2013.
An ex-parte reexamination can be filed up to six (6) years after the patent is granted. There is a filing fee of $6,000 for a small entity, and double that for a large entity. The fee may seem high, but it pales in comparison to the costs of a federal district court declaratory judgment action.
The entity or person filing for the reexamination must be able to show that one or more claims for the patent are based on a “substantial new question of patentability.” As the USPTO puts it: “The request must point out how any questions of patentability raised are substantially different from those raised in the previous examination of the patent before the Office.”
The reexamination is called ex-parte because it is not necessarily adversarial. Both sides prepare their documents and arguments and submit them to the USPTO, which will then conduct a reexamination, which is similar to the original examination for the patent’s approval.
What Is an Inter-Partes Review (LPR)?
The inter-partes review (IPR) replaced the inter-partes reexamination with the enactment of the AIA. An IPR can be requested by a third party who is not the owner of the patent under two circumstances: beginning nine months after the patent was issued, or in the event of a post-grant review, when that procedure has been terminated.
The USPTO explains: “An inter-partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged.” The filing and institution fees total $23,000.
IPRs resemble more of a classic courtroom procedure than a reexamination. The proceeding is overseen by three (3) administrative patent judges who are members of the Patent Trials and Appeal Board (PTAB). Ex-parte re-exams are conducted by patent examiners.
The standard of proof is a preponderance of evidence. Given the complexity of an IPR, you should be represented during the proceedings by a registered patent attorney. Other proceedings may affect IPR. For example, IPR may not be instituted if a petition is filed after the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent. Conversely, if the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent on or after the petition for IPR is filed, then the civil action will be automatically stayed. A counterclaim of invalidity does not qualify as a civil action challenging validity. The stay will be lifted under the same circumstances as PGR.
What is a Post-Grant Review?
Post-Grant Reviews (PGRs) became available on September 16, 2012, when the America Invents Act became effective. Any third party can file for a PGR on the basis that it is “more likely than not” that the claim against the patent will be substantiated (“reasonable likelihood” is the basis for an IPR). The action can be taken nine months after the patent is issued or reissued. With the exception of business method patents and pending interferences, PGR will only apply to patents that contain a claim that has an effective filing date that is on or after March 16, 2013. Under the AIA, estoppel for PGR becomes effective with a written PTAB decision with respect to any ground that the petitioner raised or reasonably could have raised. However, settlement agreements are allowed, which create no estoppel.
One advantage of a PGR is that the grounds for challenging the patent are much broader than under an IPR filing. Otherwise, the process is fairly similar.
Once the petition is filed, the patent holder can submit a preliminary response that sets forth reasons why no IPR should be instituted. Like PGR, the petition for IPR must identify all real parties in interest. The petition must also, like PGR, identify each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim. Such evidence may include patents, printed publications, affidavits, and declarations. Like PGR, the Director will then determine whether to institute an IPR within three (3) months after the preliminary response is received or the last date on which the preliminary response may be filed if no preliminary response is received. The Director’s determination as to whether to institute an IPR cannot be appealed. The threshold for determining whether to institute an IPR is “reasonable likelihood that the petitioner would prevail with respect to at least one (1) of the claims challenged in the petition.” Thereafter, there will be a discovery period much as in a civil trial, followed by a hearing. The decision, like an IPR decision, should come within 12 months, though an additional six months can be added for “good cause.”
Other proceedings may affect PGR. For example, PGR may not be instituted if a petition is filed after the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent. However, if the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent on or after the petition for PGR is filed, then the civil action will be automatically stayed. A counterclaim of invalidity does not qualify as a civil action challenging validity. The stay will be lifted if the patent owner moves to lift the stay, the patent owner files an action or counterclaim for infringement, or if the petitioner moves to dismiss the civil action.
Trusted Guidance When You Need It Most
Whichever option fits your goals and whatever evidence is available to cast doubt on a patent, you will need the counsel and guidance of an experienced and registered patent attorney to guide you.
Your attorney can help you assemble the documents and evidence needed to show that at least one claim of a patent you’re challenging is based on a prior patent or printed publication. You will also need representation if you go the route of an IPR or PGR.
COFFYLAW, LLC has long been helping clients with their patent issues and concerns across the nation. The firm has the experience, knowledge, and resources to help you mount a challenge against a patent that is hindering or threatening your business operations. Reach out to the firm to start moving forward.