Patent Challenges: Ex Parte Reexamination and Inter Partes Review
If you believe that a particular U.S. patent is a threat to your operations (see the “Are We Infringing a Patent?” Primer) but is partly or wholly invalid based on prior patents and/or printed publications,1 there are a number of options for challenging the patent and establishing its invalidity. One option is to file a declaratory judgement action in federal district court seeking a “declaratory judgment” of invalidity. That option, known as a “DJ” action, is extremely costly, intensive, complicated, and prolonged, and is not covered in this Primer.2
Other options can be pursued within the Patent Office and can have the same or even a better result than litigating invalidity in court, however, with a much smaller commitment of time and resources. Two of these options are ex parte reexamination, and inter partes review (or “IPR”).3 An ex parte reexam is less of a commitment than an IPR, but only allows the challenger to put forth its views early in the proceeding. An IPR is a more litigation-like affair with participation by the challenger, but is more costly.
Ex Parte Reexamination
An ex parte reexam can be sought any time after issuance of a patent, with a base filing fee of $6,000 for a small entity (twice that if not a small entity). The request must assert invalidity of one or more claims of a patent based on a “substantial new question of patentability,” such as prior art that was not considered during examination of the patent, or prior art that was considered during examination but is presented in a new light or a different way. The patent owner then responds with a statement setting forth its arguments supporting validity, and it may amend the claims to better distinguish the prior art at any time during the proceeding. In response to the patent owner’s statement, the challenger may file a reply rebutting the patent owner’s arguments. After that, the process becomes an examination conducted solely between the Patent Office and the patent owner, and proceeds similarly to an ordinary examination4 though with some restrictions.
Inter Partes Review
An IPR can be sought any time after nine months have elapsed since a patent’s issuance5, with base filing and institution fees totaling $23,000. The petition must establish a reasonable likelihood that one or more challenged claims of the patent6 will be invalidated, which is a broader standard than that for the ex parte reexam. If an IPR is instituted, an accelerated litigation-like proceeding including limited discovery ensues. It is very difficult and rare for the patent owner to be permitted to amend the patent’s claims in an IPR. The process is much more expensive than ex parte reexam, but much less than litigation.
Whereas ex parte reexams are conducted by examiners in a special unit within the Patent Office, IPRs are conducted by administrative patent judges who serve as members of the Patent Trials and Appeals Board. Both are technically skilled, but the latter are more skilled in the applicable law and some believe more willing to invalidate issued patents.
A major advantage of challenging a patent’s validity through an ex parte reexam or IPR rather than litigation is that it is significantly more likely to result in a finding of invalidity than litigation. First, claims are given a broader interpretation than they are in litigation – so more prior art applies, and second, the standard of proof is only a preponderance of the evidence whereas litigation requires the higher standard of clear and convincing evidence of invalidity.
A registered patent attorney should assist you in challenging a patent by ex parte reexam, and representation is a virtual necessity for handling the complicated IPR proceeding.7 The challenger may remain anonymous, however, in the ex parte reexam.
- See the “Is Your Invention Patentable over the Prior Art?” Primer.
- Unlike the options discussed here, however, a DJ action can establish non-infringement. It also is the only way to establish invalidity based on something other than a patent or printed publication, except in limited cases for the post grant review mentioned in the next footnote.
- Other options are the covered business method proceeding, or “CBM,” and the post grant review, or “PGR.” The CBM only applies to patents that are directed to business methods. The PGR only applies to patents with earliest effective filing dates after March 15, 2013 and is only available during the nine months immediately after their issuance.
- See the “How Long Does the Patent Examination Process Take?” Primer.
- If possible, a PGR petition can instead be filed prior to that time.
- The IPR proceeding is only available for patents filed on or after November 29, 1999.
- Counsel must be obtained if the person concerned with the patent is a company or other “juristic entity.”