Why Not Just Go for Patent Office Review?

• Author: David A. Allgeyer
• Pages: 9-14

9

CHAPTER 2

Why Not Just Go for

Patent Office Review?

Post-grant review and inter partes review now offer fairly effi-

cient ways to challenge patent validity. In a sort of administra-

tive trial, the Patent Office will reevaluate whether the patent

has been proven to be invalid based on prior art and other issues

often invoked to attack the validity of patents.1 The process is

relatively quick. Because it is focused, it is likely to be much less

1 The Patent Office provides a short description of these processes on its

website as follows:

Post grant review is a trial proceeding conducted at the Board

to review the patentability of one or more claims in a patent on

any ground that could be raised under § 282(b)(2) or (3). Post

grant review process begins with a third party filing a petition

on or prior to the date that is 9 months after the grant of the

patent or issuance of a reissue patent. The patent owner may

file a preliminary response to the petition. A post grant review

may be instituted upon a showing that, it is more likely than

not that at least one claim challenged is unpatentable. If the

proceeding is instituted and not dismissed, a final determina-

tion by the Board will be issued within 1 year (extendable for

good cause by 6 months). The procedure for conducting post

grant review took effect on September 16, 2012, and generally

applies to patents issuing from applications subject to first-in-

ventor-to-file provisions of the AIA.

. . .