USA (Challenges) Flashcards
What does “re-issue” mean?
USA
An applicant can broaden their claims within 2 years of grant, or can restrict their claims at any time.
Subject matter cancelled or removed from the application during prosecution cannot be added back.
But the application must be re-examined, which may result in the patent being re-issued, or in the patent being objected to. Therefore, the risk is that you try and amend the claims but then your application runs into trouble with a new examiner.
What is a post-grant review?
USA
Equivalent to EPO post-grant opposition. 9 months just as in Europe.
However, two notable differences:
- The USPTO will not allow the review unless the opponent (the “petitioner”) can demonstrate that at at least one of the challenged claims is unpatentable. (Thus, a petitioner requesting a post-grant review with similar grounds to what was already covered during prosection is unlikely to be successful.) In Europe, by contrast, proceedings are as of right.
- The petitioner is estopped from raising the same issues as in the post-grant review in later proceedings.
Review is before a Patent/Trade Mark Appeal Board (PTAB).
What is an inter-partes review?
USA
After the 9-months for post-grant reviews are up, anyone can request cancellation of one or more claims at any time with inter-partes review.
The acceptable grounds are restricted to novelty and obviousness in view of printed publications only.
The USPTO will only allow the review if the petitioner can accept they are likely to succeed with respect to at least one challenged claim.
Review is before a Patent/Trade Mark Appeal Board (PTAB).
What is an ex-parte re-examination?
USA
Anyone at any time can request that the patent be re-examined by a panel of three USPTO examiners. They must show a substantial new question of patentability based on printed publications only.
This is not a challenge before a PTAB. Once the requester makes the request their involvement is over. They are not made party to the proceedings.
A proprietor can request ex-parties re-examination, but they would typically use supplemental examination instead.
What is a supplemental examination?
USA
This is just re-examination of the application requested by the patent owner. Grounds are broad and are not limited only to patentability in view of printed publications. It can be useful for fixing issues with a patent before enforcing it.
In practice, it’s largely replaced ex-partes re-examination requested by the patent owner.
