Using the US Patent and Trademark Office to Neutralize Invalid Patents

How do you deal with a patent that may cover a product or service that you plan to make, use, sell, offer to sell, or import? What happens if one of your competitors controls that patent? Or you receive a letter threatening a patent infringement lawsuit? Or you get sued?

If the patent is a US patent and you have reason to believe that the patent is invalid and never should have been issued (based on your knowledge of the industry and/or the results of a prior art search), you may be able to challenge the patent’s validity using a United States Patent and Trademark Office (USPTO) process, which can be much cheaper than litigation. If the USPTO finds the patent to be invalid, then the threat of a patent infringement lawsuit may diminish or even disappear altogether.

Beginning in 2012, the USPTO began offering three new proceedings for challenging the validity of already-issued US patents: inter partes review (IPR), post grant review (PGR), and covered business method patent (CBM) review.

In each of these “post-grant” proceedings, a panel of administrative patent judges at the USPTO’s Patent Trial and Appeal Board (PTAB) determines whether or not the claims of the patent are valid based on any prior art, evidence, and/or arguments presented by both the patent owner and the challenger. Moreover, during these post-grant proceedings, the patent owner and the challenger can even conduct limited discovery and argue their positions before the administrative patent judges.

Additionally, the PTAB judges will issue their decision within approximately 18-24 months after a petition is filed – a timeline that is significantly faster than previous processes available at the USPTO. In addition to this faster time table, USPTO post-grant proceedings are also typically much less costly than patent litigation in the federal courts because the USPTO processes focus exclusively on patent validity rather than on patent validity and patent infringement.

In addition to these “post grant” proceedings, ex parte reexamination also remains as an option for seeking invalidation of an issued patent. Ex parte reexamination differs from the “post grant” proceedings in several ways. For example, an ex parte reexamination can be requested by a third party, who will be largely uninvolved in the process after the reexamination request is granted and the reexamination proceeding substantively commences. As such, ex parte reexamination is less like litigation and is also less expensive. Moreover, a third-party reexamination requestor can request the reexamination anonymously. Finally, an ex parte reexamination is conducted by examiner at the USPTO that specialize in ex parte reexaminations rather than by the administrative patent judges at the PTAB.