Guide
Post-Grant Proceedings Comparison Chart
Use this chart to compare the USPTO's post-grant proceedings: who can use each proceeding, when it is available, which arguments it allows, how long it takes, and whether it creates estoppel. Choose the proceeding that matches your role and your best argument.
Challenging someone else’s patent
| IPR | PGR | Ex parte reexam | |
|---|---|---|---|
| Who can request | Anyone but the patent owner | Anyone but the patent owner | Anyone, including the owner |
| When | After nine months from grant; one year after service if sued | Within nine months of grant | Any time the patent is enforceable |
| Eligible patents | All | First-inventor-to-file only | All |
| Grounds | §§ 102/103, patents and printed publications | Any § 282(b)(2)/(3) ground | Substantial new question from patents and printed publications |
| Requester participation | Full adversarial trial | Full adversarial trial | Limited to the request and one reply |
| Target timeline | About 18 months from filing | About 18 months from filing | No fixed deadline; “special dispatch” |
| Estoppel on requester | Yes | Yes | No |
| Appeal by requester | Yes, to the Federal Circuit | Yes, to the Federal Circuit | No |
Patent owner options
| Supplemental examination | Reissue | Certificate of correction | Disclaimer | |
|---|---|---|---|---|
| Purpose | Have information considered; limit inequitable-conduct attacks | Correct errors; adjust claim scope | Fix clerical or minor mistakes | Give up a claim or part of the term |
| Who | Patent owner | Patent owner | Owner (or Office, for Office error) | Patent owner |
| Time limits | None stated for request | Two years to broaden | None, but earlier is better | None |
| Risk | Reexamination may be ordered | All claims re-examined | Limited to minor errors | Irrevocable |
Historical options
Inter partes reexamination (replaced September 16, 2012) and covered business method review (sunset September 16, 2020) no longer accept new filings.
Primary Sources
Related Pages
- GuidePost-Grant Patent Proceedings: A Guide to Your OptionsAfter a U.S. patent issues, it can still be challenged, defended or corrected at the USPTO. A third party can…
- GuidePost-Grant Review vs. Inter Partes ReviewPost-grant review (PGR) must be filed within nine months of grant and allows almost any invalidity ground,…
- GuideUSPTO and AIA LinksThe primary sources for post-grant practice are the Patent Act (35 U.S.C.), the USPTO's rules (37 C.F.R.),…
Educational information; not legal advice. Statutes, rules and USPTO practice change. Confirm against the primary sources and consult a registered patent practitioner before acting. Disclaimer.