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Patents Q&A

What Are the Ways to Challenge a Granted Patent?

It may be desired to proactively challenge the validity or patentability of a granted U.S. patent for a variety of reasons. What are the available options to challenge a granted patent either at the U.S. Patent & Trademark Office (USPTO) or in court? The following table compares the different types of proceedings and summarizes the applicable standards.

————————Post Grant Review (PGR)Inter Partes Review (IPR)Derivation Proceeding (DP)Ex Parte Reexamination (Reexam)District Court Civil Action — Declaratory Judgment (DJ Action)
Eligible Target Patents Based on Effective Filing Date (EFD)AIA patents only: EFD ≥ March 16, 2013Any patent AIA patents only: EFD ≥ March 16, 2013Any patentAny patent
Available Grounds§§ 101, 102, 103, 112 (no best mode), including double patenting§§ 102 and 103 based on patents and printed publications (only)Derived invention without authorization§§ 102 and 103 based on patents and printed publications (only)Any (except best mode)
Timing RequirementsWithin 9 months of patent grant (or reissue)AIA patents: after 9 months (end of PGR)
Non-AIA patents: after issuance
Both: only within 1 year of civil action
Within 1 year of grant or publication of claim, whichever is earlierAnytime patent remains assertableAnytime patent remains assertable
Claim Interpretation StandardSame as district court civil action (Phillips)Same as district court civil action (Phillips)Same as district court civil action (Phillips) Broadest reasonable interpretation (BRI) except
Expired patents: Phillips
Markman / Phillips
Eligible Filing PartiesAny 3rd partyAny 3rd partyInventorAnyoneAnyone with standing (substantial controversy between parties having adverse legal interests of sufficient immediacy and reality; requires affirmative act by patentee)
ThresholdMore likely than not unpatentableReasonable likelihood petitioner will prevailSubstantial evidenceSubstantial new question of patentability (SNQ)Plausibility (Iqbal / Twombly)
Estoppel (Attaching to Challenger)Raised or reasonably could have raisedRaised or reasonably could have raisedNone by statute, but derivation-specific administrative estoppel and deferenceNone by statute, but administrative estoppel and deferenceRes judicata and collateral estoppel (for civil actions only)
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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.