Patent Administrative Challenges

Third parties have the ability to challenge a patent administratively, rather than through traditional judicial processes. As such, the Intellectual Property Practice Group at Crain Caton & James is fully prepared to both initiate challenges against patents that have been erroneously granted and defend against those who seek to challenge a client’s valid patent. Such challenges may include pre-issuance submissions, Post Grant Reviews, and Inter Partes Reviews. It is imperative to understand that the strength of the team you retain can significantly influence the outcome, thereby impacting your client’s rights to practice their invention or prevent others from doing so.

Our Intellectual Property Practice Group is equipped to address pre-issuance submissions, which are available during the application process for a U.S. patent. These submissions, though administratively filed with the United States Patent and Trademark Office (USPTO), are limited both in terms of timing and content, and the submitter plays no further role after filing. A third-party entity may submit patents, published patent applications, and other printed publications that could be relevant to the examination of the patent application. However, the window for such a submission is narrow: it must be filed before the USPTO issues a notice of allowance and within the later of either six months after the publication date or the date of the first rejection of any claim by the USPTO examiner.  The content of the submission must include a concise description of the evidence being asserted, the appropriate filing fee, and a statement of relevance. This description is limited to factual explanations of how the referenced item may impact patentability and should not include arguments or legal conclusions. A claim chart is an acceptable method of presenting this information. While the examiner may consider the cited references, the submitter has no further role in the prosecution of the application. The submitter is not permitted to rebut any arguments presented by the applicant, nor can they challenge the resulting patent post-issuance. Consequently, such submissions can be effective, but they must be approached carefully, as they can preclude the submitter from engaging in future adversarial actions against the patent.

In a similar vein, the Intellectual Property Practice Group at Crain Caton & James stands ready to address patent validity through a Post-Grant Review (PGR), when available. Unlike a pre-issuance submission, a PGR is both administrative and adversarial in nature, though the challenger faces certain limitations. Under a PGR, any party with standing may file a petition to invalidate one or more claims of a recently issued patent. To succeed, the challenger must show that it is “more likely than not” that at least one of the challenged claims is unpatentable. This burden requires a demonstration that a claim is, in fact, more likely than not unpatentable. The grounds for such challenges are broad and include anticipation, obviousness, lack of written description, lack of enablement, indefiniteness, or lack of statutory subject matter. This is a more expansive set of grounds than what is available in other types of challenges.  The window for filing a PGR petition is limited to nine months following the patent grant or, in the case of a federal complaint asserting infringement, no later than one year after service of that complaint. The scope of the review is limited to the grounds asserted in the petition and is conducted before the Patent Trial and Appeal Board (PTAB).

A separate, but related, process for challenging patent validity post-grant is the Inter Partes Review (IPR). Like the PGR, an IPR is conducted before the PTAB, but the proceedings are more limited. The challenger must still identify itself and any parties in interest in its petition, but the standard to initiate the proceeding is lower. The challenger need only demonstrate a “reasonable likelihood” of prevailing on at least one claim, which triggers the initiation of the review. Unlike a PGR, an IPR petition may be filed any time after the nine-month post-grant period has expired but must be filed within twelve months of service of a federal complaint asserting infringement. An IPR is limited to grounds of anticipation and obviousness, and as with the PGR, the scope of review is confined to the grounds raised in the petition. Importantly, once an IPR is filed, the petitioner, or any real party in interest, is precluded from raising any additional grounds of invalidity that could have been raised during the IPR.

The final administrative challenge the Intellectual Property Practice Group handles is ex parte reexamination. Ex parte reexamination differs from both PGRs and IPRs in several critical respects. It is a one-time filing, similar to a pre-issuance submission, as the petitioner has no further participation after the petition is filed. However, unlike PGRs and IPRs, the petitioner may remain anonymous in an ex parte reexamination. The standard for initiating a reexamination is lower than that of a PGR or IPR: the petitioner must show only that there is a “substantial new question of patentability” based on prior art. This question is limited to anticipation, obviousness, and obviousness-type double patenting. A petition for reexamination can be filed at any time during the life of the patent.  Once the reexamination is initiated, it essentially reopens the prosecution of the patent, with an examiner from the Central Reexamination Unit considering the prior art submitted, as well as any additional art the examiner deems relevant. The patent owner has the opportunity to amend claims or present arguments to overcome the new question of patentability. Importantly, any amendments made during reexamination may result in intervening rights for those who practiced the invention as originally claimed, should the claims be substantively amended.

When an appeal is made of the adversarial proceedings (IPR, PGR), Crain Caton is ready to take on the efforts at the Court of Appeals for the Federal Circuit.  The Intellectual Property Practice Group incorporates skilled appellate law practitioners for preparation and presentation of the case, by briefs and by oral arguments.

The Intellectual Property Practice Group at Crain Caton & James stands ready to assist clients in responding to any of these administrative challenges or in determining the most appropriate form of challenge to assert, based on the circumstances of each case.