Due to exponential increase in government filing fees taking effect on September 16, 2012 as a result of the US Patent & Trademark Office's (USPTO) implementation of new post-grant reexamination procedures, and for other strategic reasons, now is the time to consider whether any contemplated reexamination requests should be filed prior to September 16, 2012. For example:

  • The Patent Office's filing fee for ex parte reexamination, currently $2,520, will rise to $17,750 after September 16, 2012;
  • The government filing fee for inter partes reexamination: currently $8,800, will be replaced with a new procedure, inter partes review, having a base filing fee of $27,200; and
  • The new post-grant review procedure, currently only available for business method patents, will have a base filing fee of $35,800.

Beyond avoiding huge fee increases, there may be strategic reasons to act before the new rules take effect.

In some cases, the longer pendency of the current Inter Partes Reexamination procedure may be preferable to a relatively quick Inter Partes Review (which will have an 18 month target pendency).

Further, September 15, 2012 may be the last chance for an inter partes patentability challenge of any kind before the USPTO. This is because inter partes review cannot be filed after one year from the date a complaint was served alleging infringement of the patent. Given that inter partes reexamination will end September 16, 2012, and post-grant review will not be generally available for cases having a priority date earlier than March 15, 2013, those parties involved in litigation for around a year or more may be fast approaching their last opportunity for an inter partes USPTO patentability challenge.

The America Invents Act (AIA) is bringing a number of important changes to the US patent system. Following is a summary of the options available for challenging the validity of a US Patent within the USPTO, taking into consideration the new options being made available through implementation of the AIA.

Ex Parte Reexamination

Ex parte reexamination has been, and remains, available under the AIA. Through ex parte reexamination, the patent owner or a third party may lodge a request for USPTO examination of an already-granted patent based on patents and printed publications that are brought to the USPTO's attention in the request. While such a request can be filed at any time during the enforceability of a target patent, the requestor must establish that the submitted prior art establishes a substantial and new question of patentability, at which point the USPTO will grant the reexamination request and order reexamination of the target patent.

After a request is filed, a third-party requestor is involved only during the initial stages of the proceeding. Thereafter, the proceeding excludes the third-party challenger. Due to the lack of an opportunity to participate in the proceedings, this form of review generally represents the lowest cost alternative. However, the inability to comment and participate in the examination process clearly results in a one-sided picture, biased heavily in favor of the patentee.

No legal estoppel is created by an ex parte reexamination proceeding. However, as a practical matter it may be more difficult to invalidate a challenged patent in another proceeding (such as district court litigation) based on prior art considered by the USPTO during the reexamination proceeding.

The AIA left ex parte reexamination effectively unchanged, except for the fees. Currently, an ex parte reexamination can be filed for a $2,520 government filing fee. After September 16, 2012, the filing fee will soar to $17,750.

Inter Partes Reexamination

Inter partes reexamination also existed prior to the AIA. Inter partes reexamination will phase out on September 16, 2012. Thus, if inter partes reexamination is desired, a request must be filed by September 15, 2012, and it must demonstrate the existence of a reasonable likelihood that the requester would prevail with respect to at least one of the claims that are challenged in the request. Those cases filed under the old inter partes reexamination rules will be completed by the USPTO.

Inter partes reexamination allows a patent to be challenged based on patents and printed publications. Also, inter partes reexaminations are conducted before the central reexamination unit of the USPTO, with prosecution typically being closed (for each party) upon filing of the first substantive response by that party, with request for continued examinations being disallowed and with appeals being heard by the Board of Patent Appeals and Interferences.

However, unlike ex parte reexamination, the requester retains the right to participate throughout the reexamination proceedings. Thus, the requester is given a much stronger voice and a much greater opportunity to advocate their positions during the examination process. This is a clear advantage over ex parte re-examination procedures. Also, as a procedural matter, inter partes reexaminations do not provide for Examiner interviews by the patent owner. Obviously, these proceedings are more resource intensive than ex parte proceedings, and thus are relatively more costly.

Once commenced, an inter partes reexamination will continue to completion under rules that preexisted the AIA. On or after September 16, 2012, however, no further inter partes reexamination requests may be filed. Rather, the AIA contemplates two new inter partes mechanisms, namely, post-grant review and inter partes review, both of which are discussed below. Average pendency of an inter partes reexamination proceeding is estimated at approximately 36 months according to USPTO estimates.

Inter Partes Review

Inter partes review becomes available on September 16, 2012, as a procedure made available to challenge the validity after nine-months from the issue date of the patent being challenged. Inter partes review is available for all patents on September 16, 2012, regardless of priority date.

For inter partes review to be commenced, a third party must establish a reasonable likelihood that they will prevail on at least one claim. The prior art available for inter partes review is limited to prior art grounds based on patents and printed publications.

This proceeding is more complex, and fast-paced, relative to current inter partes re-examination proceedings. For example, inter partes review is structured to result in a final decision regarding patentability reached by the USPTO in a time frame of approximately 18 months. This procedure would be more costly than inter partes reexamination.

Post-Grant Review

Post-grant review becomes available on September 16, 2012. However, at that time, post-grant review can be invoked only for a small number of patents relating to business methods. Post-grant review is generally available only for patents that have a priority date later than March 15, 2013.