Post-Grant Actions

  • Inter Partes Review: While post-grant review provides a petitioner a forum to challenge a patent on any basis of patentability, IPRs are limited to challenges on the grounds of novelty and non-obviousness based only on patents and printed publications. A challenged patent in an IPR is not presumed valid, unlike in district court litigation (where there is litigation patent judgements). IPRs are trial-like proceedings conducted in front of a panel of administrative patent judges—the Patent Trial and Appeal Board (PTAB). Parties may collect evidence by deposing experts and inventors, and the parties support their cases with oral arguments before the PTAB.
  • Post Grant Reviews: PGR provides a petitioner a forum to challenge a patent on any statutory basis of patentability. Unlike IPRs, PGRs are not limited to challenges on the grounds of novelty and nonobviousness based on only patents and printed publications. Rather, any statutory ground under §§ 101, 112, 102, and 103 can be challenged in a PGR. PGRs, like IPRs, are trial-like proceedings conducted in front of a panel of administrative patent judges—the PTAB. Parties may collect evidence by presenting expert or factual testimony via declarations, and declarants are deposed. Parties support their cases with oral arguments before the PTAB.
  • Covered Business Method (CBM) Patent Proceedings: Covered Business Method (CBM) patents are patents that claim a method, apparatus, or operation used in the practice, administration, or management of a financial product or service. CBM patents do not include patents for “technological inventions,” which are those patents that claim a novel and unobvious technological feature that solves a technical problem using a technical solution. Technological patents will be identified on a case-by-case basis and the CBM is the process by which the PTAB will determine it
  • Reexamination Proceedings: Under the America Invents Act (AIA), ex parte reexamination proceedings, which have unique rules and procedures, remain an important option to consider when challenging the validity of a patent.
  • Reissue Proceedings: Patent reissue allows a patentee to correct a wide variety of errors in an issued patent if the error renders the patent partially or wholly inoperative or invalid. Filing a reissue has associated risks and limitations, especially when attempting to broaden patent claims.
  • Interference Proceedings: Although the first-to-file provision effectively removed the option of an interference for most new patent applications, interferences remain viable for many patent applications containing claims entitled to earlier filing dates. Bold IP is adept at navigating through complicated priority fact patterns and the transitional AIA provisions to advise whether an interference is an appropriate tool for clients. Known as priority contests to decide who was first to invent, interferences have also long provided an opportunity to contest patentability of a competitor’s claims under a lower standard of proof than is available in district court.
  • Derivation Proceedings: Derivation proceedings provide an exception to the otherwise absolute first-to-file provisions of the AIA. For patent applications having an effective filing date on or after March 16, 2013, the derivation proceeding is available to an inventor who believes that an earlier-to-file patent applicant derived the invention without authorization. Although derivation proceedings are new, derivation of an invention is an often-raised issue in interferences in cases involving some element of collaboration. Who conceived the invention and when are important components of both priority of invention and derivation of an invention.
  • Appealing a PTAB Decision: PTAB decisions are appealed directly to the Federal Circuit. Once a final decision has been reached by the PTAB, upon reasonable grounds a motion for appeal may be filed with the United States Court of Appeals for the Federal Circuit in Washington D.C.

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