Post Grant Proceedings Flashcards
Who can initiate Ex Parte Reexamination?
Patent Owner or Third Party, including USPTO Director
Who can initiate Reissue?
Patent Owner only
Who can initiate Inter Partes Reexam?
Third Party only (not Patent Owner)
Who can initiate Inter Partes Review (IPR)?
Third Party only (not Patent Owner) (except plaintiff in court action challenging validity of patent)
Who can initiate Post-Grant Review (PGR)?
Third Party only (not Patent Owner) (except plaintiff in court action challenging validity of patent)
Who can initiate Supplemental Examination?
Patent Owner only
Who can initiate Post-Grant Validity Review of Business Method Patents?
Third Party that was sued or charged with infringement (not Patent Owner)
What patents qualify for Reissue?
Any patent
What patents qualify for Ex Parte Reexam?
Any patent
What patents qualify for Inter Partes Reexam?
Patent was an application filed on or after Nov. 29, 1999 (and up to and including September 15, 2012)
What patents qualify for Inter Partes Review (IPR)?
Any patent (starting September 16, 2012)
What patents qualify for Post-Grant Review (PGR)?
Patent has a claim with an effective filing date (priority) that is on or after March 16, 2013 (see §3(n)(1) of AIA)
Does the patent qualify for Supplemental Examination?
Yes, but covers “any information” and thus not limited to patents (e.g., incorrect arguments of a declaration; public sale before critical date; litigation papers; small entity status wrongly claimed; etc.)
What patents qualify for Post-Grant Validity Review of Business Method Patents?
Only “a covered business method patent”
Window for filing Reissue
Anytime before patent expires
Window for filing Ex Parte Reexam
Anytime during enforceability of patent (which can be 6 years past expiration due to past damages)
Window for filing Inter Partes Reexam
Anytime during enforceability of patent (which can be 6 months past expiration due to past damages)
Window for filing Inter Partes Review
Starting Sept. 16, 2012, later of: on or after 9 months after patent issuance or issuance of reissue; or termination of PGR (pre-AI patent does not have 9 month window)
Window for filing Post-Grant Review?
Starting Sept. 16, 2012, no later than 9 months after patent issuance or issuance of reissue
Window for filing Supplemental Examination
Anytime before patent expires
Window for filing Post-Grant Validity Review of Business Method Patents
Starts September 16, 2012, but ends September 16, 2020
Grounds for filing Reissue
The patent, through error and [without any deceptive intent], is considered to be wholly or partly inoperative or invalid
Grounds for filing Ex Parte Reexam
§§ 102 and 103 based on patents and publications
Grounds for filing Inter Partes Reexam
§§ 102 and 103 based on patents and publications
Grounds for filing Inter Partes Review
§§ 102 and 103 based on patents and publications
Grounds for filing Post-Grant Review
Any ground (except for failure to comply with the best mode requirement)
Grounds for filing Supplemental Examination
Any “information” relevant to patentability
Grounds for filing Post-Grant Validity Review of Business Method Patents
Like PGR, but no § 102(e) prior art
Threshold Standard for Reissue
N/A
Threshold Standard for Ex Parte Reexam
SNQ of Patentability
Threshold Standard for Inter Partes Reexam
SNQ before Sept. 16, 2011; starting Sept. 16, 2011 is “reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim
Threshold Standard for Inter Partes Review
“reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim
Threshold Standard for Post-Grant Review
“more likely than not” that at least one of the claims challenged in the petition is unpatentable
Threshold Standard for Supplemental Examination
SNQ of Patentability
Threshold Standard for Post-Grant Validity Review of Business Method Patents
“more likely than not” that at least one of the claims challenged in the petition is unpatentable
