Merchant & Gould’s attorneys and technical staff have a broad range of scientific and engineering expertise. Our ability to team court, PTO, legal and technical resources leads to optimized strategy and results in all forums. The following are procedures available before the PTO.
Inter Partes Review is a trial-like proceeding that allows any third party to challenge the enforceability of patent claims by filing a request for the USPTO to conduct further examination of specified claims of the patent on the basis of prior art patents and printed publications. In order for the request to be granted, a reasonable likelihood that at least one challenged claim would be found invalid has to exist. The patent owner will have a chance to narrow the claims of his/her patent, while the patent challenger can then serve discovery and file motions directed to these validity issues. An inter partes review proceeding has to be initiated by a third party within a year of being named in a lawsuit. This procedure in part replaces the former inter partes reexamination process, which is no longer available for new challenges, although pending reexaminations will continue.
Ex Parte Reexamination is a proceeding that can be initiated at any time during the enforceability of a patent by any person filing a request for the USPTO to conduct a second examination of any claim of the patent on the basis of prior art patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have bearing on the patentability. In order for the request for reexamination to be granted, a substantial new question of patentability must be present with regard to at least one patent claim. In this type of proceeding, a request can be made by any person, but excludes a third party from participating in the ex parte proceedings beyond the filing of a reply to the patent owners statement under 37 CFR § 1.530, if the patent owner files a statement.
Covered Business Method Proceedings are trial-like proceedings that allows a named defendant in a lawsuit relating to a business method to challenge the enforceability of patent claims by filing a request for the USPTO to conduct further examination of specified claims of the patent. In order for the request to be granted, a reasonable likelihood that at least one challenged claim would be found invalid. The Covered Business Method proceedings can be brought at any time by a named defendant if the patent in question does not describe a “technological invention” but once instantiated generally follows similar procedures to those involved in inter partes review.
Post grant review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on a broad array of grounds, including indefiniteness and enablement. In many ways other than the scope of the review, post grant review is expected to operate much like inter partes review with respect to time limits, availability of discovery and claim amendment, and other issues.
Derivation proceedings take the place of interference proceedings for applications filed on or after March 16, 2013, and are a new trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.
Reissue is a Patent Office procedure involving surrender of an unexpired patent deemed to be wholly or partly inoperative or invalid due to errors that occurred without deceptive intent, and Patent Office review to address and correct defects in the patent.
Supplemental examinations provide a patent owner a procedure to request the Patent Office to consider, reconsider, or correct information believed to be relevant to the patent at issue. Supplemental examinations are part of the America Invents Act, which became effective on September 16, 2012
Interference is a Patent Office proceeding to determine priority of invention between a pending application and one or more pending applications and/or one or more unexpired patents. Interference proceedings remain available for any patents having an effective filing date prior to March 16, 2013.