Guide
Post-Grant Patent Proceedings: A Guide to Your Options
After a U.S. patent issues, it can still be challenged, defended or corrected at the USPTO. A third party can use inter partes review, post-grant review or ex parte reexamination; the patent owner can use supplemental examination, reissue, a certificate of correction or a disclaimer. Which one fits depends on who you are, how much time has passed, and which arguments you need.
On this page
The USPTO offers several ways to revisit a patent after grant. They differ in who may use them, when, what arguments are allowed, and what you give up by using them. Start with the question that matches your situation.
If you want to challenge someone else’s patent
| Goal | Usually consider | Why |
|---|---|---|
| Challenge on prior patents or publications, more than nine months after grant | Inter partes review | Adversarial trial before the PTAB, with a defined timeline |
| Challenge on any validity ground, within nine months of grant | Post-grant review | Broadest grounds, but only for first-inventor-to-file patents |
| A low-cost, one-sided request on patents and printed publications | Ex parte reexamination | Open to anyone, any time in the patent’s life, with limited requester participation |
If you own the patent
| Goal | Usually consider | Why |
|---|---|---|
| Put newly found prior art in front of the Office and gain protection from related inequitable-conduct attacks | Supplemental examination | Created by the America Invents Act |
| Fix an error that makes the patent inoperative or invalid, or change claim scope | Reissue | Re-examines the claims; broadening is time-limited |
| Fix a printing or clerical mistake | Certificate of correction | Narrow remedy for minor errors |
| Give up a claim or part of the patent term | Disclaimer | Statutory or terminal disclaimer |
Proceedings that no longer exist
Two once-prominent tools are now historical: inter partes reexamination (replaced by IPR in 2012) and the covered business method review program (which sunset in 2020). They are explained here because older decisions and articles still refer to them.
Who decides: the PTAB
Most contested post-grant trials are decided by the Patent Trial and Appeal Board. For a side-by-side view, use the comparison chart, or read how PGR and IPR differ in detail.
In This Section
- Certificate of CorrectionA certificate of correction fixes a mistake in an issued patent without reissue. Under 35 U.S.C. § 254 the Office corrects its own mistakes…
- Statutory Patent DisclaimersA disclaimer is a written statement in which a patent owner gives up a claim or part of a patent's term. A statutory disclaimer cancels one…
- Ex Parte ReexaminationEx parte reexamination lets anyone, including the patent owner, ask the USPTO to re-examine an issued patent in light of prior patents or…
- Inter Partes Reexamination (Historical)Inter partes reexamination was an optional USPTO procedure, created in 1999, in which a third-party requester could participate throughout…
- Inter Partes Review (IPR)Inter partes review is a trial before the Patent Trial and Appeal Board in which anyone other than the patent owner asks the USPTO to…
- Post-Grant Review (PGR)Post-grant review lets anyone other than the patent owner challenge an issued patent on almost any ground of invalidity, but only within…
- Reissue ApplicationsA reissue application lets a patent owner surrender an issued patent and have a corrected one granted when an error makes it wholly or…
- Supplemental ExaminationSupplemental examination lets a patent owner ask the USPTO to consider, reconsider or correct information that may be relevant to the…
- The Patent Trial and Appeal Board (PTAB)The Patent Trial and Appeal Board is the administrative tribunal within the USPTO that decides appeals from examiner rejections and…
- Transitional Program for Covered Business Method Patents (Historical)The covered business method (CBM) program was a temporary post-grant review for patents claiming methods or apparatus used in financial…
Primary Sources
Related Pages
- GuidePost-Grant Review vs. Inter Partes ReviewPost-grant review (PGR) must be filed within nine months of grant and allows almost any invalidity ground,…
- GuidePost-Grant Proceedings Comparison ChartUse this chart to compare the USPTO's post-grant proceedings: who can use each proceeding, when it is…
- 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.