Post-Issuance Proceedings

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.

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

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.

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)

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

Broadening Reissue

• The patent owner can ONLY file a broadening reissue within 2 years of grant
• After 2 years, only narrowing reissue is possible

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).

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.

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)

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.