Post Grant Proceedings: Reexam, IPR, and CBM

Since the passage of the America Invents Act (or “AIA”) in 2011, there are at least four different mechanisms to challenge a patent through the U.S. Patent and Trademark Office without requiring the involvement of a trial court. The attorneys of Forsgren Fisher McCalmont DeMarea Tysver LLP can guide you through these processes.

The Patent Office has long had the ability to reexamine an issued patent “ex parte” (without any third party participation once the reexamination has begun), and this did not change after the AIA was passed. To initiate an ex parte reexamination, a request must be filed with the Patent Office that raises a “substantial new question of patentability” based on a written prior art reference. A patent owner can begin this process on their own patent by filing a request for supplemental examination.

Prior to the AIA, the Patent Office also allowed “inter partes” reexamination, which meant that a third party requestor was allowed to fully participate in the process. After the AIA, inter partes reexamination was discontinued. In its place, the Patent Office now provides for “post-grant reviews” and “inter partes reviews” of patents. Both of these proceedings allow third-party participation. Post-grant reviews are available only for patents that have an original filing date after March 15, 2013. In addition, post-grant reviews must be initiated within nine months of the patent’s issue date. Post-grant review proceedings can be based on any of the patentability requirements (see the BitLaw discussion on patent requirements), including whether or not the invention involves patentable subject matter. Inter partes review proceedings can be initiated against any patent other than those that are eligible for post-grant review, but can only be based on printed prior art documents.

The AIA also created a “covered business method” (CBM) review process for certain business method patents. A party that has been charged with patent infringement can challenge the validity of the patent under the CBM process, but only if the patent covers a “financial services” business method that does not relate to a technological innovation.

Forsgren Fisher McCalmont DeMarea Tysver LLP has experience in these post-grant proceedings, and we would be happy to answer any questions that you may have about attacking or defending the validity of a patent through one of these processes.