Specialties

Post-Grant Proceedings

Our focus is obtaining strong valid patents for our clients. However, our services do not end when a patent grants. Wenderoth understands the complexities of maintaining a strong patent portfolio.

Thus, our attorneys utilize post-grant proceedings, such as traditional Reexamination and Reissue procedures, as well as the newly-available procedures created under the America Invents Act (AIA), including Post-Grant Review (PGR), Inter Partes Review (IPR), and Supplemental Examination, to achieve strategic goals for our clients. By relying upon our expertise, we enable our clients to challenge their competitor’s patents, and defend and strengthen the validity of their own patents. To this end, Wenderoth assists clients in all post-grant proceedings, including:

  • Inter Partes Review (IPR)
  • Post Grant Review (PGR)
  • Supplemental Examination
  • Ex Parte Reexamination
  • Reissue

Please see below for a description of each proceeding in this category.

 

Inter Partes Review (IPR)

Inter Partes Review (IPR) was created under the America Invents Act (AIA) to allow a third party (any person who is not the patent owner) to challenge the validity of a patent based only on issues of novelty and obviousness. The documents for consideration are thus limited to patents and printed publications, similar to a Reexamination proceeding. An IPR can be requested any time after at least 9 months following the issuance of the patent (or after completion of a Post Grant Review proceeding), and up until expiration of the patent. The USPTO standard for instituting the IPR is a finding that there is a “reasonable likelihood” that the patent challenger will prevail with respect to at least one claim. In addition to the “reasonable likelihood” standard, another significant difference between an IPR and a Reexamination proceeding is that the IPR is a ‘trial-type’ procedure conducted before the Patent Trial and Appeal Board (PTAB), rather than an examination procedure conducted before a sole examiner. Once instituted, both the requesting third party and the patent owner will have a limited opportunity for discovery, and the patent owner can make a motion to amend the claims, if necessary. However, the UPSTO will set relatively strict deadlines for discovery and motions because, once instituted, the IPR is to conclude within 1 year (although extensions of up to 6 months are possible for good cause). The USPTO filing fee for the initial request is about $9,000 (for any entity not entitled to discounted fees), with another USPTO fee of $14,000 due if the standard is met and the IPR is instituted.

Post Grant Review (PGR)

Post Grant Review (PGR) is another ‘trial-type’ procedure created under the America Invents Act (AIA). This procedure allows a third party (any person who is not the patent owner) to challenge the validity of a patent under all statutory grounds for invalidity, including patent ineligible subject matter, novelty and obviousness, written description, enablement, indefiniteness, and double patenting. However, the PGR must be requested within 9 months of issuance of the patent. The USPTO standard for instituting the PGR is a finding that it is “more likely than not” that at least one challenged claim is unpatentable. Similar to an IPR, the ‘trial-type’ PGR procedure is conducted before the Patent Trial and Appeal Board (PTAB), rather than before a sole examiner. Once instituted, both the requesting third party and the patent owner will have a limited opportunity for discovery, and the patent owner can make a motion to amend the claims, if necessary. However, the UPSTO will set relatively strict deadlines for discovery and motions because, once instituted, the PGR is to conclude within 1 year (although extensions of up to 6 months are possible for good cause). The USPTO filing fee for the initial request is about $12,000 (for any entity not entitled to discounted fees), with another USPTO fee of $18,000 due if the standard is met and the PGR is instituted. 

Supplemental Examination

Supplemental Examination was created under the America Invents Act (AIA) to provide the patent owner with a way in which to cure any issues that could subject the patent to an allegation of inequitable conduct. As such, any potential issue under any statute can be raised in a Supplemental Examination proceeding, such as patent eligible subject matter, novelty, non-obviousness, written description, enablement, definiteness, and double patenting. Information to be considered during a Supplemental Examination may include any information that the patent owner believes to be relevant to the patent, including patents and printed publications, prior sales, or public use. The standard for instituting a Supplemental Examination is similar to that of a Reexamination proceeding – the proceeding will be instituted if the USPTO determines that the information submitted raises “a substantial new question of patentability (SNQ).” Once instituted, the Supplemental Examination will proceed like a Reexamination of the patent, and therefore will be handled by an examiner. The USPTO filing fee for the initial request is about $4,400 (for any entity not entitled to discounted fees), with another USPTO fee of $12,100 due if the standard is met and the Reexamination is instituted. Thus, the Supplemental Examination proceeding is considerably less expensive than a Reexamination proceeding if the USPTO decides that no SNQ is raised (although the strength of the patent will still arguably be increased), but considerably more expensive if the USPTO decides that a SNQ is raised and therefore institutes the Reexamination.

Ex Parte Reexamination 

Ex Parte Reexamination allows any person (the patent owner, a competitor, or another interested party) to request reexamination of an issued patent at any time during the enforceability of the patent. The issues for consideration are limited to questions of novelty and obviousness, and the documents for consideration are limited to patents and printed publications. If the USPTO determines that the standard of “a substantial new question of patentability” is met, the patent will re-enter examination through the Central Reexamination Unit (CRU). The process is handled by an examiner in much the same manner as the initial examination process, and so the patent owner and the USPTO are the only parties involved (even if the Reexamination is requested by a third party). The USPTO filing fee is about $12,000 (for any entity not entitled to discounted fees).

Reissue

Reissue proceedings are utilized when an issued patent, through error, is considered to be “wholly or partly inoperative or invalid.” Errors include issues such as claiming too much or too little, a defective specification, or a defective priority claim. This proceeding is available only to the patent owner, and must be accompanied by a special Declaration identifying at least one error upon which the patent owner is relying. This is the only procedure available by which the claim scope can be broadened, but any such broadening reissue application must be filed within 2 years of the issue date for the patent (and is also subject to other limitations such as no recapture of subject matter surrendered during initial prosecution). The patent owner must also agree to “surrender” the original patent, and so any patent emerging from a reissue procedure will be assigned a new “RE__” series number. The USPTO filing fee is about $3,000 (for any entity not entitled to discounted fees).