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, 2013||Any patent||AIA patents only: EFD ≥ March 16, 2013||Any patent||Any 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 Requirements||Within 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 earlier||Anytime patent remains assertable||Anytime patent remains assertable|
|Claim Interpretation Standard||Same 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 Parties||Any 3rd party||Any 3rd party||Inventor||Anyone||Anyone with standing (substantial controversy between parties having adverse legal interests of sufficient immediacy and reality; requires affirmative act by patentee)|
|Threshold||More likely than not unpatentable||Reasonable likelihood petitioner will prevail||Substantial evidence||Substantial new question of patentability (SNQ)||Plausibility (Iqbal / Twombly)|
|Estoppel (Attaching to Challenger)||Raised or reasonably could have raised||Raised or reasonably could have raised||None by statute, but derivation-specific administrative estoppel and deference||None by statute, but administrative estoppel and deference||Res judicata and collateral estoppel (for civil actions only)|
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.