As part of the America Invents Act, three new ways to challenge a patent will become effective on September 16, 2012. Here is what you should know:
- Anyone may challenge a patent within nine months after the patent is issued. The nine-month deadline is important because Post-Grant Review provides the best opportunity to challenge a competitor's patents.
- Compared to other challenges, such as Inter Partes review and Reexamination, Post-Grant Review allows a patent to be challenged on any grounds, not just based on prior art patents and printed publications. In addition, the threshold for entry is lower than for other challenge proceedings. After a request is filed, a Post-Grant Review proceeding will be started if the Patent Trial and Appeal Board determines it is more likely than not that at least one of the patent's claims is unpatentable.
- Companies should monitor their competitors' applications and newly-issued patents. If there is an application or patent that could cause commercial problems, then the company will have a chance to challenge it using Post-Grant Review.
- The Patent Office fee for requesting a Post-Grant Review is steep at $35,800, plus $800 for each claim in excess of 20 (plus additional attorney fees). In spite of that, the total costs should be considerably less than a litigation proceeding. In addition, the commercial certainty that this proceeding can provide a company could be very important and valuable.
- This proceeding only applies to patents that are filed on or after March 16, 2013 (yes, that is 2013).
Inter Partes Review
- If a company misses the nine-month deadline for Post-Grant Review, they can still request an Ex Parte Reexamination or the new Inter Partes Review proceeding. The new Inter Partes Review allows a challenger to participate in the review of the patent.
- The grounds for challenge are much more restricted than for Post-Grant Review; only prior art patents and printed publications can be the basis for an Inter Partes Review. The threshold for entry is also more difficult; there must be a reasonable likelihood that the requester would prevail.
- The Patent Office fee for requesting an Inter Partes Review is $27,200, plus $600 for each claim in excess of 20 (plus additional attorney fees).
Downsides to Post-Grant Review and Inter Partes Review
- The challenger cannot later raise in any court proceeding any argument that was raised or could have been raised in a Post-Grant Review or Inter Partes Review process. Basically, starting a Post-Grant Review or an Inter Partes Review could limit a challenger's ability to use an invalidity defense in later infringement litigation on the patent. This risk will have to be carefully considered, on a case-by-case basis, before an after-grant review proceeding is commenced.
- If the application has not yet been granted, anyone can submit documents with a short description of their relevance to patentability of the application in a Third-Party Submission. The deadline calculation for filing the Third-Party Submission is complicated, but generally it must be made within six months of the first publication of the patent application. Therefore, it is useful to monitor patent applications published by your competitors.