Patent Office Proceedings - Module 3 of 5
Module 3: Patent Office Proceedings
Even after a patent is issued, a number of USPTO (which we’ll refer to sometimes as the Patent Office) proceedings can impact the enforceability and scope of the patent. Let’s say, for example, that Google just obtained a patent on a new smart speaker, and Amazon is concerned that Google will sue Amazon for infringement. Amazon could pursue a Patent Office proceeding to force the Patent Trial and Appeal Board (an arm of the USPTO) to consider the validity and scope of Google’s new patent. These proceedings are typically faster, more efficient and less expensive than district court litigation. In this module, we will look at seven types of post-issuance proceedings.
The 2011 America
Invents Act provided sweeping reform of the patent system. Among many changes, the Act added four new
Patent Office proceedings that can be used to challenge issued patents -- Post-Grant
Review, Inter Partes Review, Covered Business Method Patent
Review and Derivation proceedings. Some commentators believe that
these new avenues to challenge patents have weakened the patent system and made
patents less valuable. Still, a patent that emerges from any post-issuance
proceeding might be stronger than before because it received a second blessing
from the Patent Office.
Among these new
proceedings, Inter Partes Review is by far the most popular, constituting about
92% of such petitions.
In contrast, Grant Review petitions constitute only about 2%.
A petition for Post-Grant Review must be filed by a party other than the patent applicant, such as Amazon in our earlier example. It must be filed within nine months of the challenged patent’s issue date. Alternatively, if the filing party (Google) had made a specific charge of infringement against an Amazon product, Amazon could opt to file a District Court action seeking a declaratory judgment of invalidity of the patent. Note that Amazon can only choose one of these two maneuvers. If Google had first sued Amazon for infringement, Amazon could defend the action and may additionally file a petition for Post-Grant Review.
After a Post-Grant
Review petition is filed, the patent owner may file a preliminary response. The
Patent Trial and Appeal Board has three months to decide whether to institute
the Post-Grant Review proceeding. This decision is based on whether the
petition has established that it is “more likely than not” that at least one of
the challenged claims is unpatentable. Historically, Post-Grant and Inter Partes
proceedings settle approximately 15% of the time after petitions are filed, are
denied approximately 25% of the time and are instituted about 50% of the time.
Review petition can challenge one or more claims of a patent based on any
ground for invalidity, including subject-matter eligibility,
and insufficient written description.
If and when a
Post-Grant Review is instituted, the patent owner has the right to engage in
discovery, which can include document production and depositions. This
discovery is much more streamlined than in district court litigation, and it is
limited to evidence directly related to a factual assertion by either
party. After a 3-month discovery period,
the patent owner has the option to file a substantive response, which often
includes expert witness declarations regarding the validity of the disputed
claims. The patent owner can also file a motion to amend the claim or claims in
response to the grounds for invalidity raised by the petition, but the
amendment cannot enlarge the scope of the claims or introduce new subject
patent owner’s response and any motion to amend claims, the petitioner can
engage in discovery for an additional three months. Then, the petitioner may
reply to the patent owner’s response. If
the patent owner filed a motion to amend, the petitioner can file an
opposition. If so, the patent owner can conduct related discovery for one month
and can file a reply in support of the amendment.
Oral hearings are
typically scheduled a month or two following the final filing. Just as in litigation, all parties to a Post-Grant
Review can file motions to exclude evidence from the hearing. A petitioner cannot typically raise new
arguments in the hearing that were not raised in the initial petition. At the hearing, each party has only an hour
or so (set by the board) to present its case, so it is rare to present any
in-person or video testimony. The hearings resemble appellate oral arguments,
and the judges often interrupt attorneys’ presentations to ask questions.
The Patent Trial
and Appeal Board must issue a decision within one year of the filing date. The
burden of proving invalidity of a patent claim is the preponderance of the
evidence. After receiving the final written decision,
both parties have the right to appeal the Board’s decision to the Court of
Appeals for the Federal Circuit.
Reviews are typically more expedient and less expensive than district court
actions, but they are not cheap. The
Patent Office fee for filing a petition is (as of 2019) $16,000, and an
additional fee of $22,000 is charged if Post-Grant Review is initiated. In addition, as in litigation, the legal fees
associated with discovery, brief drafting and trial can be significant. Finally, the concept of estoppel is an
important consideration in determining whether to seek Post-Grant Review. Once
a Post-Grant Review is instituted, the challenging party will be estopped in
any subsequent district court proceeding from asserting any grounds for
invalidity that it raised or reasonably could have raised during the Post-Grant
If a challenging party wants to challenge one or more claims of a patent issued more than nine months earlier, it can opt to file a petition for Inter Partes Review. Just as in Post Grant Review, an Inter Partes Review cannot be filed by a party who previously filed a declaratory judgment action in district court for invalidity of the same patent. In addition, an Inter Partes Review petition cannot be filed more than one year after a party is sued for infringement of the challenged patent.
An Inter Partes Review will be instituted if the
petition shows a reasonable likelihood that the petitioner will be able to
invalidate at least one of the challenged claims. This is a somewhat easier standard to meet
than the Post-Grant Review’s standard.
However, when compared with Post-Grant Review, the available grounds for
invalidity are limited. The Board can
only consider prior art that is either a printed publication or another patent.
In addition, the only available grounds for invalidity are anticipation and
obviousness. Thus, an Inter Partes Review cannot entail subject-matter eligibility considerations or
insufficient written description, and many prior art products cannot be used as
a basis for invalidity.
The timing and
typical documents filed in an Inter Partes Review mirror those of a Post-Grant
Review. However, discovery is even more
limited. The only automatically allowed
discovery involves depositions of witnesses submitting declarations or
affidavits as part of the petition or response.
Parties can seek additional discovery, but they must establish that such
discovery is necessary in the interest of justice. In practice, this is a fairly difficult
standard to meet.
Review hearings are also similar to those of Post-Grant Review, and the parties
have a similar right to appeal any decision to the Federal Circuit. Also, as in Post-Grant, estoppel applies in
future proceedings to bar any grounds that were raised or reasonably could have
been raised in the petition.
Overall, an Inter
Partes Review is somewhat less expensive than a Post-Grant Review. The limited grounds for invalidity, limited
scope of prior art, and limited discovery typically result in a more
streamlined process. As a result,
attorneys’ fees can be lower than for Post-Grant Review. In addition, the Patent Office fees for
instituting an Inter Partes Review petition are slightly lower than Post-Grant
-- $15,500 for filing the petition, and another $15,000 if the proceeding is
instituted (as of 2019).
A third Patent Office proceeding created by the America Invents Act is known as Covered Business Method Review. As the name suggests, this proceeding only applies to patents that claim certain business methods pertaining to financial products or services. It does not pertain to any technological invention. The Board has interpreted the “financial services” requirement broadly, even allowing review of a patent directed at a computerized method and a system to provide personalized nutrition information.
Business Method proceeding can be filed at any time after the 9-month Post-Grant
Review period expires. Unlike the proceedings discussed earlier, only third
parties who have been sued or specifically threatened with an infringement
lawsuit can file Covered Business Method petitions. 
In addition to
the requirements discussed earlier, a Covered Business Method proceeding will
be instituted if the Board determines that it is probable that at least one
claim is invalid. The proceedings move
at a similar schedule to the other proceedings, and discovery is available on
for any evidence directly related to any factual assertion by either party.
Business Method review provides several advantages over an Inter Partes
Review. First, the claims can be
challenged based on any ground for invalidity as in the case of the Post-Grant
Review. Second, any parallel district court case is
stayed until the conclusion of the Covered Business Method proceeding. Third,
the estoppel impact is not as severe as in the other types of review we focused
on earlier, extending only to grounds that were actually asserted in the
proceeding, not grounds that reasonably could have been asserted.
Filings for the Covered
Business Method Review have been on the decline and, as of this writing, it is
scheduled to be phased out in late 2020.
The fourth type of new proceeding created by the America Invents Act is known as a Derivation Proceeding. This proceeding is a trial conducted by the Patent Trial and Appeal Board to determine two important issues: first, whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application; and second, whether the earlier application claiming such invention was filed without authorization. The necessity for this new proceeding arose from the switch from a first-to-invent system to a first-to-file system.
example, suppose that the inventor of Google’s new smart speaker had actually
derived the invention from someone at Amazon, but that Google filed the first
application. Obviously, any such filing would not have been authorized by
Amazon, and Amazon -- as the first true inventor -- should be able to block
Google’s patent. The Patent Office has a
variety of potential remedies it can apply in a derivation proceeding. The Patent Office could, for example, declare
that Amazon owns Google’s patent.
applicant subject to the first-to-file provisions may file a derivation
petition only within a year of the first publication of a claim to an invention
that is substantially the same as the earlier application's claim. In addition, the derivation petition must be
supported by substantial evidence that the claimed invention was derived from
an inventor named in the petitioner's application.
the potentially broad remedies for a derivation proceeding, the first
proceeding was not instituted until more than five years after the America
Invents Act was enacted. The Patent Trial and Appeal Board denies the vast
majority of derivation petitions. Due to the expense of having attorneys
prepare and file the petition, many inventors and companies have decided not to
pursue this option.
proceedings were an option, inventors could pursue patent interference
proceedings to challenge the inventorship of another’s patent. Interference proceedings now apply only to older
patents that are not subject to the America Invents Act, and they result from
the previous first-to-invent standard.
In an interference proceeding, the Patent Trial and Appeal Board
determines which party actually invented the claims in the challenged patent. “First to invent” generally means the first to conceive and the first to reduce the
invention to practice. However, one is also considered first to invent if one
was first to conceive and one worked on the invention with reasonable diligence
from a date prior to the other party’s conception. As with the other
proceedings, an interference proceeding includes briefing, motions, depositions
and a hearing before the Board.
Before Post-Grant Review and Inter Partes Review were options, an Ex Parte Reexamination was the most common method of challenging an issued patent with the Patent Office. Reexaminations remain possible even after passage of the America Invents Act.
Any person or
entity, including the inventor or owner of the patent, can file a request for
Ex Parte Reexamination at any point during the period of enforceability of a
patent. The Patent Office will order the
reexamination if the request presents new prior art that raises a substantial
new question of patentability. As with the Inter Partes Review, the prior
art submitted for a reexamination is limited to patents and printed
is conducted by a panel of three experienced examiners. The patent owner has
the right to submit a first response and then the proceeding is conducted
largely without input from any party.
the number of Ex Parte Reexaminations dropped significantly following passage
of the America Invents Act. However,
reexamination remains an attractive option in many situations. First, a
reexamination can be performed on any patent, including those issued prior to the
passage of the Act. Second, the patent owner can request the reexamination if,
for example, he learns of new prior art.
Although this presents some risks, any patent that survives a
reexamination will emerge stronger.
Third, reexaminations are substantially less expensive than the Post-Grant
Review or Inter Partes Review. In addition to the relatively low filing fee,
the only other expenses are attorneys’ fees for preparing the request. Fourth, reexaminations now typically proceed
more quickly than the other forms of post-grant proceedings. Finally, reexaminations do not trigger
estoppel. However, if the Patent Office sustains a patent in the face of the
new prior art, it might be even more difficult to invalidate the patent in a
later district court action.
The America Invents Act created one additional avenue that can be used by patent owners to potentially strengthen their patents and possibly prepare for litigation, known as Supplemental Examination. A patent owner can request supplemental examination and ask the Patent Office to consider, reconsider or correct information that the patent owner believes is relevant. The Patent Office can initiate a supplemental examination if the request raises a substantial new question of patentability and the remainder of the process is nearly identical to reexamination.
reexamination, a supplemental examination can be based on any prior art -- not
just printed publications and patents -- and it can address other potential
reasons for invalidity, including subject-matter eligibility and written
Only patent owners can request supplemental examination, and other parties cannot participate in the process. So why would a patent owner want to subject his patent to a second look at the patent office, possibly resulting in claims being invalidated? There are three primary reasons. First, as in reexamination, any claims that survive will be very strong, doubly blessed by the Patent Office. Second, supplemental examination can give patent owners a chance to “test-drive” validity arguments prior to litigation. Third, nothing that the patent owner discloses can later be used in a district court proceeding as a basis for rendering the patent unenforceable due to inequitable conduct.
For example, suppose that Google knew of certain material prior art but failed to disclose it when obtaining its original smart speaker patent. If Google sued Amazon and Amazon discovered this error, the patent could be rendered unenforceable due to this inequitable conduct. But if Google obtained a supplemental reexamination of the patent, and if one or more of the claims survived, it could sue Amazon without worrying about the failure to disclose.
In our next module, we’ll turn to patent maintenance, transfer and enforcement.
 37 CFR 42.202(a)
 35 U.S.C. 101
 35 U.S.C. 102
 35 U.S.C. 103
 35 U.S.C. 112
 35 USC 315(b)
 35 USC 321
 35 USC 303
 35 USC 257(a)