Occasionally the best defense is a good offense. In patent terms, going on the offensive entails challenging a competitor's patent or patent application. The America Invents Act (AIA) has introduced many changes in this field over the past few years, adding some new ways to challenge and drastically changing the scope of others. In this newsletter, we examine the six most important, which range from the earliest challenges available to those that can be used to challenge issued patents throughout their life.
Third Party Pre-issuance Submissions:
Pre-issuance submissions allow third parties to submit prior art patents, published applications, or printed publications of potential relevance. Importantly, third parties are required to include a written explanation of their submission. This is a substantial change from the prior regulations, and allows third parties to put their arguments in front of the examiner.
Although not an official method for challenging a patent application, the backdoor method can be highly effective. This technique is generally used if the opportunity to file a pre-issuance submission has passed and involves sending the desired reference to the applicant or their attorney and relying on them to abide by their duty of disclosure to force them to submit the prior art to the United States Patent and Trademark Office (USPTO). If the applicant does not submit the prior art, you may at least have an allegation of inequitable conduct to use against them in a potential infringement proceeding.
Post Grant Review (PGR):
Post Grant Review is a new method of challenging a patent after issuance, introduced by the AIA. It is available for the first 9 months after patent issuance, and is instituted by filing a petition with the required fee and any necessary evidence to the newly formed Patent Trial and Appeal Board (PTAB). Before allowing the proceeding to commence, the PTAB will review the request and deny it unless the challenger is deemed more likely than not to win or the case involves a novel or unsettled legal question important to other patents and applications. The third party instituting the PGR can raise any challenge that could be raised in court.
Inter Partes Review (IPR):
If you have missed your opportunity to request PGR, IPR will still be available. IPR is the AIA replacement for Inter Partes Reexamination, and can be instituted 9 months after grant of a patent or at the termination of a post grant review. IPR is very similar to the old Inter Partes Reexamination, but the standard for instituting such review has changed from a substantial new question of patentability to a reasonable likelihood that the challenger will prevail with respect to at least one claim in the challenged patent. This is generally thought to be a considerably higher standard to meet.
If the challenger does not wish to be involved in the review proceeding, ex-parte reexamination may be a relatively economical choice. Like IPR, Ex-parte reexamination is limited to prior art patents and printed publications and remains largely unchanged under AIA. The standard for instituting an ex-parte reexamination proceeding is the existence of a significant new question of patentability. Of strategic importance, ex-parte reexamination allows the challenger to remain anonymous.
Supplemental examination is sometimes used by applicants to prevent charges of inequitable conduct, since references reviewed under supplemental examination are treated as being reviewed during prosecution. Inequitable conduct and criminal charges may still be brought however if the underlying conduct was fraudulent.
The standard for instituting this proceeding is that the newly disclosed material poses a substantial new question of patentability. Importantly, supplemental examination will not be available to the patent owner if the reference was brought to their attention through litigation by their opponent during discovery.
Use of the aforementioned back door method post-grant may force the applicant to petition for supplemental examination at their own expense, however, due to the cost of such a proceeding, the likelihood of success is not as great as when forcing the applicant to submit the reference in an IDS.
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This is just one small example of how, here at MCR, we keep the community informed of the changing legal landscape. Please contact me or anyone here for more information. And please pass this along to anyone you know that may be interested, or in need of intellectual property legal services.
Matthew J. Curran, Esq.
Registered Patent Attorney