Invalidating Someone Else's Patent - Part 1: Ex Parte Reexaminations. Episode 77

Is Your Patent Safe from Invalidation?

If you’ve followed all 76 of my previous episodes, and things have gone according to plan, then—if you’re lucky—you have a granted patent. However, just because you have a granted patent doesn’t mean it’s completely safe. Patent protection lasts for 20 years from your filing date, provided you pay the required maintenance fees.

But unfortunately, patents can still be invalidated.

Sometimes, a patent examiner makes an error and grants a patent that should never have been issued. So, how can a patent become invalidated?

Post-Grant Review and Invalidating Someone Else’s Patent

There are multiple ways to invalidate a patent. If it’s done at the Patent Office rather than through a court, it falls under post-grant review. These procedures can work both ways—your patent can be invalidated, but if you want to invalidate someone else’s patent, you can also use these procedures.

Why would you want to invalidate someone else’s patent? If you listened to my last episode on patent infringement, you should have a good idea. Perhaps you developed a product, but you found a patent that could put you at risk of infringement. However, you believe that the patent in question should never have been issued. Maybe it covers something obvious, or perhaps you know of prior art that the examiner missed. If that patent didn’t exist, you wouldn’t have to worry about being sued. Therefore, you may want to challenge its validity.

Currently, there are four primary procedures used to invalidate a patent at the Patent Office. These are known as post-grant proceedings. Older procedures exist for some legacy patents, but I won’t be covering those. The four most common post-grant proceedings are:

1. Ex Parte Reexaminations

2. Inter Partes Reviews (IPR)

3. Post-Grant Reviews (PGR)

4. Covered Business Method (CBM) Proceedings

   
   

Choosing the right procedure depends on your specific situation. In some cases, you may have multiple options, while in others, only one procedure may be available.

What Is an Ex Parte Reexamination?

The easiest and least expensive procedure to challenge a patent is an ex parte reexamination, which is the focus of this episode.

An ex parte reexamination involves requesting that a different patent examiner—other than the one who originally approved the patent—reassess the patent. The basis for this reassessment must be lack of novelty or obviousness. While these are the most common reasons for invalidation, you cannot use ex parte reexaminations to challenge a patent based on issues like patent-ineligible subject matter (e.g., a mathematical formula or algorithm).

One advantage of an ex parte reexamination is that it can be filed anonymously. This means the patent owner won’t know who is attempting to invalidate their patent. Another benefit is that an ex parte reexamination can be requested at any timewhile the patent is enforceable, unlike other procedures that have strict deadlines.

Filing an Ex Parte Reexamination Request

To initiate an ex parte reexamination, you must submit a request to the Patent Office, arguing that a substantial new question of patentability exists. This is the standard the Patent Office uses to determine whether to proceed with the reexamination.

There is also a required filing fee. For small businesses, this fee is typically around $3,000. Once your request is filed, a patent examiner will review it to determine whether your arguments establish a substantial new question of patentability. If the examiner decides that no such question exists, the patent remains in force. You can petition the Director of the Patent Office to reconsider, but if they uphold the rejection, the process ends there for this particular invalidation method.

If the examiner does find a substantial new question of patentability, then a reexamination is ordered.

The Limitations of an Ex Parte Reexamination

One major drawback of the ex parte reexamination process is that your role essentially ends once your request is filed. While the patent owner can submit a statement, and you may have an opportunity to reply, this rarely happens. Generally, you do not get to engage in a back-and-forth argument with the examiner. You submit your evidence and arguments upfront, and from that point, the process is between the Patent Office and the patent owner.

Once the reexamination is initiated, the Patent Office issues an office action to the patent owner, rejecting claims based on the newly submitted prior art. The patent owner then responds, possibly requesting an examiner interview—just like in standard office actions during patent prosecution.

The examiner may then issue a final office action. If the patent owner fails to convince the examiner that their claims are still valid, the claims may be rejected. However, if the patent owner successfully argues their case, they may retain their patent rights.

If the final rejection is issued, the patent owner can appeal to the Patent Trial and Appeal Board (PTAB). Other possible outcomes include allowing some claims while invalidating others. In such cases, the Patent Office will issue a Notice of Intent to Issue an Ex Parte Reexamination Certificate, outlining the status of each claim.

Advantages and Disadvantages of Ex Parte Reexaminations

At this point, discussing the advantages of an ex parte reexamination in comparison to other procedures may not be entirely useful, as I have yet to cover the other post-grant procedures. However, one key advantage is that it is significantly less expensive than challenging a patent in court.

The main disadvantage is that the requester has little control over the process after submitting the request. You don’t get to argue with the examiner, clarify your points, or respond to the patent owner’s counterarguments. The patent owner, on the other hand, has the opportunity to defend their patent directly with the examiner. You must rely on the Patent Office to make the right decision based solely on the initial submission.

Conclusion

While this episode covered ex parte reexaminations, future episodes will discuss the other post-grant procedures, such as inter partes reviews and post-grant reviews. These methods offer different advantages and involve varying levels of participation and complexity.

I’m Adam Diament, and until next time, keep on inventing!