POST GRANT REVIEW
Allows a 3rd party to submit reasons and prior art as to why an issued patent should not have been allowed.
Filed within 9 months of patent's issuance.
3rd party can submit prior art references and argue:
The patent should not have been allowed as being obvious or anticipated (i.e.: violate sections 103 or 102)
Claims are to non-statutory subject matter (i.e.: violate section 101)
Vaguely worded or indefinite (i.e.: violate section 112)
Owner violated an on-sale or public use bar (i.e.: show that the invention was in the public realm for more than one year prior to the filing of the application)
$35,000 just to file this Petition additional charges with claims in excess of 20.
80 page limit.
Must certify that they haven’t already filed a civil action challenging the validity of a claim in the patent.
INTER PARTES REVIEW
Similar to Post Grant Review. It is a new Patent Office procedure similar to a trial entailing discovery, motions and cross-examination.
Filed until 9 months after the patent has issued.
Can only be used to challenge the patent on the grounds of anticipation or obviousness (i.e.: sections 102 and 103)
Thus, you can’t challenge the patent on the grounds of non-patentable subject matter or vagueness (i.e. sections 101 or 112) using this process.
Only printed publications and patents can be considered.
$27,200 just to file the Petition additional charge with claims in excess of 20. A portion, about $8,000, will be refunded if the Patent Office decides not to proceed with the review.
60 page limit.
Usually only parties that have been sued for patent infringement will file such a Petition.
Full trial type procedure that is heard by three judges (i.e.: not by an examiner). Since this is an inter partes procedure, the parties may actually decide to settle the case prior to the judges’ final decision.
Ex Parte Reexamination has been around for years. It is a procedure in which a 3rd party submits prior art after a patent has issued to convince an Examiner to revoke the patent. Until 2012, it was relatively inexpensive ($2,520 to file up until Sept 16, 2012). The prior art that could be submitted to the Examiner was limited to patents and printed publications.
The procedure still exists under the new rules, but is now discouraged. The Patent Office made it a less favorable option by raising the filing fee from $2,520 to $17,750 overnight.
In addition, a new estoppel provision has been added. Specifically, a party is estopped from filing an ex parte reexamination if they have already filed an inter partes review or a post grant review and a final decision has issued. This new estoppel provision applies to the real party in interest and their privies. The party filing the Petition must certify that the statutory estoppel provisions do not bar the request.
Importantly, the real party in interest can remain anonymous by using a registered patent attorney. In such a case, the registered patent attorney must certify that the real party in interest is not estopped from filing the request.
The Patent Office is now promising to make a decision on these Petitions within 3 months of receiving them. In the past, such proceedings lingered for years.
Ex Parte Reexamination
for Covered Business Method Patents
Applies only to business method patents related to “finance”, and can be used to challenge the patent’s validity regardless of when it was filed.
$35,800 and more for claims in excess of 20.
80 page limit.
Per the statute, a party can only file after they have already been sued for infringement under the patent.
How does the Patent Office justify this expensive procedure?
Once again, the Patent Office is saying that it is trying to decrease the cost of a party defending themselves from a bad business method patent. Basically, this is done by moving the action from a full district court proceeding to a (sped up) Patent Office proceeding. The Patent Office is again promising a speedy turn around with the review not to exceed one year.
So, what exactly is a “covered business method?”
Basically, a covered business method is specifically limited to a business method that is used in financial services. The rules state that a covered business method is: “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service, except that the term does not include patents for technological inventions”. The rules go on to state that a “technological invention” solves a technical problem using a technical solution. In practice, understanding the above definition will likely be as clear as mud.
Similar to a Post Grant Review, the Petitioner can have the patentability evaluated on wide grounds (patentable subject matter, anticipation, obviousness, vagueness (Sections 101, 102, 103, 112). However, the Patent Office’s determination as to whether or not to issue the review is final and non-appealable.
Declaratory Judgment Action
Anyone accused of infringing a patent may sue a patent owner seeking a declaratory judgment that the accused party is not infringing and/or that the patent is invalid.
Such declaratory judgment suits are common in federal court under the Declaratory Judgment Act under 28 U.S.C. § 2201(a). The patent owner will likely counterclaim for infringement