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Administrative Processes for Challenging a Patent (Application)


Administrative Processes for Challenging a Patent (Application)

Here are the four ways to administratively challenge a patent or patent application.  Note that I do not consider an ITC (International Trade Commission) case an administrative challenge.  The challenges are organized from least expensive and complicated to more complicated and expensive.

1. Pre-Issuance Submissions by Third Party

35 U.S.C. §122(e)

37 CFR §1.290

For more information see http://www.uspto.gov/forms/3prsubmission_instructions.pdf.

This process only allows one to submit printed publications, including published patents and patent application along with a concise statement as to why they are relevant.  Note

Third-Party Submissions must be made (1) before the later of (i) 6 months after the date the  application is first published by the Office, or (ii) the date of a first Office action on the merits rejecting any claim, and (2) before the date a notice of allowance is given or mailed.

 

2. Ex Parte Reexamination (Determination of issue by Director)

35 USC 303(a)

The basic characteristics of ex parte reexamination are as follows:

(A) Anyone can request reexamination at any time during the period of enforceability of the patent;

(B) Prior art considered during reexamination is limited to prior art patents or printed publications applied under the appropriate parts of 35 U.S.C. 102 and 103;

(C) A substantial new question of patentability must be present for reexamination to be ordered;

(D) If ordered, the actual reexamination proceeding is ex parte in nature;

(E) Decision on the request must be made no later than 3 months from its filing, and the remainder of proceedings must proceed with “special dispatch” within the Office;

(F) If ordered, a reexamination proceeding will normally be conducted to its conclusion and the issuance of a reexamination certificate;

(G) The scope of a claim cannot be enlarged by amendment;

(H) All reexamination and patent files are open to the public, but see paragraph (I) below;

(I) The reexamination file is scanned into IFW to provide an electronic format copy of the file. All public access to and copying of the reexamination file may be made from the electronic format copy available through PAIR. Any remaining paper files are not available to the public.

 

3. Inter Partes Review

35 U.S.C. §§ 311-319

For More information See http://www.aiarulemaking.com/rulemaking-topics/group-2/inter-partes-review.php

Essentially this is a mini-lawsuit in front of the Patent Office that requires the challenger to present mainly publications as evidence that a patent should not have issued (35 USC 102 & 103).  This process must be initiated within nine months of issuance of a patent.  The decision is non-appealable.

 

4. Post Grant Review

35 USC § 321

This is a newly introduced process by the AIA.  In general it only applies to patents filed after March 15, 2013.  This process will allow the challenger a broader range of challenges than Inter Partes Review.

For More information see http://www.uspto.gov/aia_implementation/faqs_post_grant_review.jsp

 


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