Challenging Already Issued Patents under the America Invents Act (AIA)

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For a number of years, the patent system was composed of four main proceedings to challenge patent validity – reexamination, reissue, interference and litigation in federal court. Understanding how patent proceedings occur in the patent office will help you understand what you might be in for when patenting your invention.

Current Proceedings – Reexamination and Reissue

Ex Parte Reexamination – Since the early part of the 1980s, this process permits the patent owner or a third party to request USPTO examination for an already-granted patent. This request is based on patents and printed publications that the requestor is bring to the USPTO’s attention.

Once the ex parte reexamination proceedings have started, only the patent owner and the patent office are involved, even if the process was initiated by a third party. Third parties may request a reexamination of another person’s patent, but that’s about it.

Ex parte reexaminations aren’t really changed by the AIA. The AIA did clarify, however, that the only avenue available for patent owners to appeal negative decisions of BPAI or PTAB is the Court of Appeals for the Federal Circuit.

AIA Replaces Inter Partes Re-examination with Inter Partes Review

The AIA has significantly changed the process for third-party post grant challenges by replacing inter parte reexaminations with inter parte reviews and post grant reviews.  While inter partes review is similar to inter partes reexamination, there are several key differences including who may bring the proceedings and the standard of proof required to commence the proceedings.

Post-Grant Review

Post-Grant review is a new proceeding under the AIA and resembles an EPO opposition. Third parties can initiate post-grant by filing a challenge within nine months of the patent’s issuance or reissuance. The standard for invoking post-grant review is that the challenger must establish that at least one challenged claim is more likely than not to be found unpatentable or that the challenge raises a novel or unsettled legal question that is important to other patents or patent applications. For patents to be eligible for this type of proceeding, they need to have a filing date of March 16, 2013 or later.

Supplemental Exam

Supplemental Examination is a new proceeding under the AIA (America Invents Act) that allows patent owners to request that the USPTO consider, reconsider, or correct any information the patent owner considers to be relevant to the patent. This essentially allowed the patent owner to immunize the patent from inequitable conduct allegations related to the information forming the basis of the request.  As part of the supplemental examination, the USPTO will determine if the submitted information raises a substantial new question of patentability, and if so, will order an ex parte reexamination.
 
By Anna Shapiro

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