Chart Summarizing Different Post Grant Proceedings

By Eugene T. Perez

Reissue

Ex Parte Reexam

Inter Partes Reexam

Inter Partes Review (IPR)

Post-Grant Review (PGR)

Supplemental Examination

Post-Grant Validity Review of Business Method Patents

Who Can Initiate?

Patent Owner only

Patent Owner or Third Party, including USPTO Director

Third Party only (not Patent Owner)

Third Party only (not Patent Owner) (except plaintiff in court action challenging validity of patent)

Third Party only (not Patent Owner) (except plaintiff in court action challenging validity of patent)

Patent Owner only

Third Party that was sued or charged with infringement (not Patent Owner)

Does the Patent Qualify?

Any patent

Any patent

Patent was an application filed on or after Nov. 29, 1999 (and up to and including September 15, 2012)

Any patent (starting September 16, 2012)

Patent has a claim with an effective filing date (priority) that is on or after March 16, 2013 (see §3(n)(1) of AIA)

Yes, but covers “any information” and thus not limited to patents (e.g., incorrect arguments of a declaration; public sale before critical date; litigation papers; small entity status wrongly claimed; etc.)

Only “a covered business method patent” (but see Sec. 18(d)(1) that refers to “financial product or service”)

Window for Filing

Anytime before patent expires

Anytime during enforceability of patent (which can be 6 years past expiration due to past damages)

Anytime during enforceability of patent (which can be 6 months past expiration due to past damages)

Starting Sept. 16, 2012, later of: on or after 9 months after patent issuance or issuance of reissue; or termination of PGR (pre-AI patent does not have 9 month window)

Starting Sept. 16, 2012, no later than 9 months after patent issuance or issuance of reissue (but see patents that qualify above)

Anytime before patent expires

Starts September 16, 2012, but ends September 16, 2020

Grounds for Filing

The patent, through error and [without any deceptive intent], is considered to be wholly or partly inoperative or invalid

§§ 102 and 103 based on patents and publications

§§ 102 and 103 based on patents and publications

§§ 102 and 103 based on patents and publications

Any ground (except for failure to comply with the best mode requirement)

Any “information” relevant to patentability

Like PGR, but no § 102(e) prior art

Threshold Standard

N/A

SNQ of Patentability (what a reasonable examiner would important in determining the patentability of the claims)

SNQ before Sept. 16, 2011; starting Sept. 16, 2011 is “reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim

reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim

more likely than not” that at least one of the claims challenged in the petition is unpatentable

SNQ of Patentability

more likely than not” that at least one of the claims challenged in the petition is unpatentable

USPTO Branch Handling Proceeding

Original Examiner from handling application

Different Examiner

Different Examiner from Central Reexamination Unit (CRU)

PTAB

PTAB

Examiner

PTAB

Identification of Real Party in Interest Required?

N/A

No (can be anonymous)

Only a (not all) real party in interest

All real parties in interest must be identified

All real parties in interest must be identified

N/A

All real parties in interest must be identified

Extent of Estoppel

N/A

None

After the finality of the proceeding (all appeals exhausted), the identified real party and interest is estopped from challenging the patent in the USPTO or district court on any ground the RPI raised or could have been raised in the reexam.

After a final decision (by PTAB), the real party and interest and any privy thereto is estopped from challenging the patent in the USPTO, ITC or district court on any ground the RPI raised or could have been reasonably raised in the IPR.

After a final decision, the real party and interest and any privy thereto is estopped from challenging the patent in the USPTO, ITC or district court on any ground the RPI raised or could have been reasonably raised in the PGR.

Would prevent the patent from being held unenforceable (in a court proceeding) on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect, if submitted or corrected during Supplemental Examination

After a final decision (by PTAB), the real party and interest and any privy thereto is estopped from challenging the patent in the USPTO, ITC or district court on any ground the RPI raised in the CB PGR.

Effect of Concurrent proceeding

Stay of litigation depends on court/judge

Likely no effect (as can be filed anonymously)

Stay of litigation depends on court/judge

If court case for invalidity filed, IPR cannot be filed; if IPR filed, then later filed court proceeding automatically stayed

If court case for invalidity filed, PGR cannot be filed; if PGR filed, then later filed court proceeding automatically stayed

Patent cannot be held unenforceable on basis of conduct relating to the “information” if the “information” was considered, reconsidered or corrected during supplemental examination

If court case for infringement filed, a stay of court case can be requested; interlocutory appeal from district court decision possible

Appeal Forum

PTAB

District Court or CAFC

CAFC

CAFC

CAFC

PTAB

CAFC

Possibility of settlement?

N/A

No

No

Yes

Yes

N/A

Yes