Challenging US patents under the AIA

Article  \  27 Jun 2013

The AIA has changed the procedures for challenging patents before the United States Patent and Trademark Office (USPTO). Ex-parte re-examination is a non-contested proceeding while inter-partes review and post-grant review are trial-like procedures before the USPTO's new Patent Trial and Appeal Board.

Ex-parte re-examination

At US$12,000 in official fees, this is the cheapest option available. The challenger merely provides evidence that a granted patent was anticipated by printed publications or another patent, leaving the examiner to agree or disagree. As the challenger cannot advocate his or her position, attorney fees are minimal. Small and micro entity rates are also available (US$6000 and $3000, respectively).

Unlike the contested options, the challenger may remain anonymous and the procedure can be requested at any time during the life of the patent. If the examiner upholds the patent, the other options for challenge are still available.  

Post-grant review

A challenger can only request post-grant review of a patent with a priority date later than 16 March 2013, so it will be some time before this option can be used. The review must be requested within 9 months of grant of the patent but the review grounds are broad, including novelty, obviousness, written description, enablement and indefiniteness. 

The USPTO must issue a determination within one year (with a 6 month extension available for good cause). Unfortunately, the official fees are US$30 000 in addition to attorney fees. There are no small or micro entity discounts. Another downside is that the challenger will be estopped from making any further claim of invalidity to the USPTO on the same grounds.

Inter-partes review

Inter-partes review complements post-grant review in that it only becomes available nine months after a patent has granted. It is available for patents filed during any time period. However, the grounds of review are narrower, being limited to questions of novelty and inventive step, on the basis of prior art patents and published documents. 

Like post-grant review, the inter partes challenger is estopped from challenging the patent before the USPTO again. The USPTO must issue a determination within a year (plus 6 months). USPTO fees are US$23 000, with attorney fees on top. There are no small or micro entity discounts. 

The prohibitive cost of these procedures means they will seldom be used proactively by New Zealand inventors or SMEs to remove invalid patents from the register.  However, they may prove useful as part of a defensive strategy, such as when an infringement action is pending. 

While the contested processes are trial-like, the costs and time-frames involved are still less than would be required to achieve the same end through the courts.

Please contact us if you have any questions about challenging US patents.

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