Challenging Validity at the USPTO
Sometimes, litigation is avoided or supported through post issuance proceedings at the USPTO. In fact, approximately one-third of patent infringement trials will have one or more review proceedings going because of the procedural advantage of challenging patentability at the USPTO, rather before a jury.
Our team has been handling these types of matters since 2001 for both patent owners and petitioners. When the America Invents Act (AIA) changed things—under the charge of improving efficiency and lowering cost, members of our team were part of the discussion that ultimately shaped the new review proceedings. There are now three types of post issuance challenges to patentability: ex parte reexam, inter partes review and post grant review.
Ex Parte Reexamination (EPX)
A one-and-done shot for a third party to file a request for the USPTO to reexam an issued patent based on printed prior art that presents a substantial new question of patentability. The USPTO has three months to respond and decide whether or not to reexam. Current statistics are that about 80% of the requester reexamination are granted and reexamination is ordered. If reexamination is ordered, then the patent owner and a panel of three senior examiners at the Central Reexam Unit (CRU) conduct the reexamination. The third party requester has no ability to participate after filing the initial request, appeal the final decision on whether or not to cancel any or all of the claims nor permit any amended claims of narrower scope to be added during the reexamination. Currently, most ex parte reexaminations are finished at the CRU in less than two years, after which the patent owner can appeal to the Patent Trial and Appeal Board (PTAB) (typical timeframe one to two years), and there can be a further appeal to the Federal Circuit (typical timeframe one year).
Inter Partes Review (IPR)
A new proceeding instituted by the AIA that allows third parties to challenge the patentability of any issued US patent by way of a proceeding before a panel of three patent judges at the PTAB. A petition for IPR must be filed no later than one year after the service of a patent infringement complaint. The petition is based only on printed publication prior art and must establish that it is reasonably likely that at least one claim in the issued patent is unpatentable. Typically, the petition is accompanied by an expert declaration. The patent owner has three months in which to file a patent owner preliminary response, after which the PTAB has another three months in which to decide whether or not to institute a trial for the IPR. If a trial is instituted, by law it must be concluded within one year. Once there is a final written decision by the board, an appeal to the Federal Circuit can be filed (typical timeframe one year). Each party participates in the trial by cross-examining the witnesses of the other side and submitting the deposition transcripts for consideration by the PTAB. Current statistics are that about 65% of petitions for IPR result in a trial being instituted, and once instituted 85%+ of the challenged claims are canceled as a result of the final written decision. IPR proceedings have been particularly popular, and currently more than 150 petitions are filed each month with the board.
Post Grant Review (PGR)
Another new proceeding instituted by the AIA that is similar to an IPR proceeding, but allows a patentability to be challenged on any ground, not just printed publication prior art. A PGR petition can only be filed for an AIA patent and must be filed within nine months of the date of issuance. The timeframe in general procedures is similar to that of an IPR. Because PGR is only available for AIA patents, very few have been instituted at this point.