Written by: Mark Terry

PART TWO In general, a reexamination is the process by which a patent owner or third-party requests that a patent’s claim(s) be reviewed against other patents or publications (prior art) by the USPTO’s Board. A patent owner may initiate the process to ensure that they have a valid patent. Subsequently, the patent owner can either pursue infringers or sleep well at night knowing that the USPTO has affirmed the validity of their patent. On the other hand, a third party may want to request a reexamination to question the validity of a patent in order to avoid paying licensing fees and/or to avoid a patent infringement suit. The two types of reexaminations available are ex partes and inter partes. The main difference between the two is that ex parte reexamination limits the third party’s involvement. Thus, most of the communication in an ex parte reexamination is between the patent owner and the USPTO. The inter partes review (IPR) process allows a third party to be much more involved.

Based on the America Invents Act, the USPTO modified the patent inter partes reexamination process, which became effective on September 16, 2012. The inter partes review (IPR) becomes available after the post-grant review which is a precursor to the IPR. In its pursuit to control lawsuits involving patents, the USPTO has instituted that both post-grant review and IPR must be filed before the third party seeks a declaratory judgment in an attempt to challenge the validity of a claim in a patent. Furthermore, an IPR must be filed by the patent owner within one year of the third party being served with an infringement complaint. Below is an overview of the post-grant review and IPR processes. Post-grant review: • Petition must be filed by a third party within 9 months of the issuance of the patent. • Board reviews patentability of one or more claims in a patent based under section 282(b)(2) or (3), which is not limited to prior art and thus can be based on any grounds. • Must show that it is more than likely than not that a least one claim can be challenged. • Patent owner may file a preliminary response. • If proceeding is instituted, a determination by the Board will be issued within 1 year. Inter partes review: • Process is initiated with third party filing a petition after either, (1) 9 months post-grant review period, or (2) after the termination the post grant review if initiated. • Board reviews patentability of one or more claims in a patent based under section 102 or 103 and only on basis of prior art (patents or printed publications). This limits estoppel effects in other forums to any other invalidity defense on all grounds except for patents and printed publications. • Need to prove reasonable likelihood that petitioner would prevail with respect to at least one claim challenged. • Patent owner may file a preliminary response to the petition. • If proceeding is not dismissed then the Board will issue a final determination within one year.

Mark Terry is a Board-Certified Specialist in the area of Intellectual Property Law. Along with Derek Fahey, they operate as patent attorneys and trademark lawyers in Fort Lauderdale, Naples, The Palm Beaches, and Miami. Contact Mark Terry if you have any questions regarding enforcement of patents, trademarks and copyrights.


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