Post-Issuance Proceedings

Post-issuance proceedings allow review or correction of issued patent claims: INTER PARTES REVIEW (IPR): statutory basis: 35 U.S.C. §§ 311-319; created by AIA (effective September 16, 2012); grounds: § 102 (novelty) and § 103 (obviousness) based on patents or printed publications only; timing: any time during patent term BUT within 1 year after service of an infringement complaint; institution threshold: reasonable likelihood that petitioner would prevail on at least one claim; timeline: 12 months from institution to Final Written Decision (FWD); estoppel: broad — all grounds raised or could have been raised; POST-GRANT REVIEW (PGR): statutory basis: 35 U.S.C. §§ 321-329; only for patents with claims having effective filing date on or after March 16, 2013 (AIA first-inventor-to-file); grounds: ANY invalidity ground — § 101, § 102, § 103, § 112, and any other; timing: ONLY within 9 months of grant or reissuance; institution threshold: more likely than not that at least one claim is unpatentable; timeline: 12 months from institution; EX PARTE REEXAMINATION (EPR): statutory basis: 35 U.S.C. §§ 302-307; grounds: § 102 or § 103 based on patents and printed publications (must raise a substantial new question of patentability — SNQ); timing: no time limit; anyone can request (even anonymously); requester has limited role after filing; no estoppel; timeline: approximately 18-24 months; REISSUE APPLICATION (RX): statutory basis: 35 U.S.C. § 251; purpose: correct errors in the original patent that are clearly evident; both corrections AND changes to claims scope; two types: narrowing reissue (recapture after prosecution history estoppel is limited); broadening reissue (must be filed within 2 years of grant — recapture doctrine bars reclaiming disclaimed subject matter); filed by the patent owner only; STATUTORY DISCLAIMER: 35 U.S.C. § 253; narrow purpose: patent owner can disclaim any complete claim(s); irrevocable; no examination required.

Ex parte reexamination (EPR) is a USPTO proceeding initiated by request: PROCESS: STEP 1 — REQUEST: any person (including competitors, but also patent owners) files a request for EPR with the USPTO; can be filed anonymously (through an attorney or agent); the request must cite prior art (patents or printed publications) and demonstrate a substantial new question of patentability (SNQ) for at least one claim; STEP 2 — SNQ DETERMINATION: the USPTO Director (in practice, the Central Reexamination Unit) determines whether the cited prior art raises a SNQ; approximately 90% of requests are granted; if granted, a reexamination certificate is ordered; STEP 3 — PROSECUTION: the examiner conducts reexamination similar to original prosecution; patent owner can amend claims and/or submit arguments; if the requester is a third party (not the patent owner), the requester has ONE opportunity to file comments in response to the patent owner's response; after that initial exchange, the requester has no further participation; STEP 4 — OUTCOME: reexamination certificate issued: claims confirmed, amended, or cancelled; STRATEGIC USE OF EPR: EPR IS BEST WHEN: the requester wants to remain anonymous; no IPR timing bar has been triggered by an infringement complaint; prior art is strong but the proceeding budget is limited (EPR has lower fees than IPR); the requester does NOT want IPR estoppel to attach (EPR has no estoppel for the requester); the patent is old (pre-AIA) and might not be eligible for IPR; EPR IS NOT IDEAL WHEN: the requester needs active participation in the proceeding; the requester wants to depose the patent owner's experts; speed is essential (EPR is slower than IPR); requester wants the credibility of an adversarial PTAB panel; INTER PARTES REEXAMINATION: available for patents filed before September 16, 2012 (pre-AIA); essentially replaced by IPR for AIA patents; third-party participation at every stage; ESTOPPEL: unlike IPR/PGR, ex parte reexamination does NOT create estoppel for third-party requesters; a company that requested EPR can still challenge the same patent on the same grounds in district court.

A reissue application allows a patent owner to correct an error in an issued patent: STATUTORY BASIS: 35 U.S.C. § 251; ELIGIBILITY: the error must be one that causes the patent to be 'wholly or partly inoperative or invalid' due to: (a) defective specification or drawing; (b) the patentee claiming more or less than the patentee had a right to claim; the error must be evident from the patent or its prosecution history (not newly discovered external facts); ERROR REQUIREMENT: the applicant must show the error was made 'without any deceptive intention'; NARROWING REISSUE: the patent owner can narrow claims at any time during the patent's life; there is no 2-year time limit for narrowing; HOWEVER: the recapture doctrine bars the patent owner from reclaiming subject matter that was deliberately surrendered during prosecution (e.g., to overcome an obviousness rejection); BROADENING REISSUE: the patent owner can ONLY file a broadening reissue within 2 years of grant; after 2 years, only narrowing reissue is possible; INTERVENING RIGHTS: a third party who began practicing the invention between the original grant and the reissue date has 'intervening rights'; ABSOLUTE INTERVENING RIGHTS: the third party can continue practicing exactly what they were doing before reissue; EQUITABLE INTERVENING RIGHTS: the court may allow the third party to continue as equitable relief; PROSECUTION: reissue is examined like a new application; the reissue application is published and third parties can file protests; WHAT CAN BE FIXED: defective description (fix specification errors); drawing errors; claim errors (narrow, broaden within 2 years, add/remove limitations); adding claim types (add method claims if product claims were filed); WHAT CANNOT BE FIXED: new matter (cannot add new disclosure that was not in the original application); recaptured subject matter (claims that were deliberately narrowed during prosecution).

IPR and PGR follow a structured adversarial process: STEP 1 — PETITION: petitioner files a petition at PTAB; IPR: up to 60 pages of argument; PGR: similar format; filing fees: IPR requesting review of 1-20 claims: $19,900; 21+ claims: additional $475/claim; fees paid at filing; petition must include: a copy of each prior art reference; claim charts mapping references to claim elements; construction of disputed claim terms; expert declaration(s) supporting the arguments; STEP 2 — PATENT OWNER PRELIMINARY RESPONSE (POPR): patent owner may file a preliminary response within 3 months of filing; POPR argues why IPR should not be instituted; can include factual evidence (expert declarations post-Cuozzo); STEP 3 — INSTITUTION DECISION: PTAB issues institution decision approximately 3 months after patent owner's POPR; threshold: IPR = reasonable likelihood; PGR = more likely than not; institution is claim-by-claim; if instituted, the proceeding begins; STEP 4 — TRIAL PROCEEDINGS (POST-INSTITUTION): patent owner may file a Patent Owner Response (POR) within approximately 3 months of institution; POR can present additional evidence, expert testimony, secondary considerations; petitioner may file a Reply within approximately 2 months; patent owner may file a surreply; EXPERT DEPOSITIONS: both parties' declarants can be deposed; limited to 7 hours (depositions of opposing experts); STEP 5 — ORAL HEARING: either party may request an oral hearing (common in contested proceedings); approximately 3 months before FWD; PTAB panel of 3 APJs; each party gets approximately 60 minutes total; STEP 6 — FINAL WRITTEN DECISION (FWD): issued within 12 months of institution (unless extended for good cause); claims are: cancelled (unpatentable — petitioner wins); confirmed (patentable — patent owner wins); STEP 7 — APPEAL: FWD can be appealed to the Federal Circuit by either party; Federal Circuit reviews claim construction de novo; reviews factual determinations for substantial evidence.

The choice among post-issuance proceedings depends on several factors: TIMING IS MOST CRITICAL: within 9 months of grant → PGR available (broadest grounds; use if § 101/§ 112 grounds are strong); more than 9 months from grant but within 1 year of infringement complaint → IPR only (§ 102/§ 103); more than 1 year from service of infringement complaint → IPR time-barred; options: ex parte reexamination (no estoppel; anonymous; limited participation) or district court invalidity (expensive); GROUNDS AVAILABLE: ONLY § 102/§ 103 from patents/publications → IPR is ideal; § 101 (Alice/Mayo) challenges → PGR only (within 9 months) or district court (after 9 months; expensive but no timing limit); § 112 (specification) challenges → PGR only (within 9 months) or district court; prior use or public disclosure evidence → district court only (not available in IPR/PGR); COST-BENEFIT ANALYSIS: EPR: lowest cost ($12,000-$30,000 attorney fees; moderate USPTO fees); anonymous; no estoppel; but limited participation and slow; IPR: moderate cost ($70,000-$200,000+; USPTO fees $19,000+); active participation; strong estoppel; 45-50% claim cancellation rate; PGR: similar cost to IPR but broader grounds; lower success rate than IPR historically; PORTFOLIO MANAGEMENT (PATENT OWNERS): use reissue to: correct claim errors; add new claim types; narrow overclaiming before enforcement; broadening reissue within 2 years if too narrow; use statutory disclaimer to disclaim weak claims before invalidity challenge; DUAL TRACK STRATEGY: file IPR immediately (within 1 year of complaint); simultaneously assert invalidity in district court (§ 101/§ 112/prior use); request stay of district court pending IPR; if IPR estoppel attaches (after FWD), district court invalidity is limited to non-IPR grounds; IMPORTANT: certificates of correction (37 C.F.R. § 1.322) can fix minor errors (clerical or typographical) without reissue; much faster and cheaper; cannot change claim scope.