How to Challenge the Validity of a Patent

Home / Blog / Intellectual Property Litigation / How to Challenge the Validity of a Patent
How to Challenge the Validity of a Patent

Created by the America Invents Act (AIA) in 2012, a post grant review is a process for questioning the validity of a patent recently issued by the U.S. Patent and Trademark Office (USPTO). It was created to make the patent validity challenge proceed more quickly than previous methods and is handled by the Patent Trial and Review Board (PTAB), circumventing the Central Reexamination Unit examiners at the patent office.

The PTAB is made up of three administrative patent judges who all have patent law experience. Final decisions by the PTAB are immediately appealable to the U.S. Court of Appeals for the Federal Circuit.

Anyone (except the patent owner) can file with the PTAB for a post grant review petition unless any of the following applies:

  • If it is before the date on which the petition for review is filed.
  • If the petitioner has already filed a civil lawsuit challenging the patent.
  • If the petitioner or another party relating to the petitioner is estopped from challenging the claims.

The Post Grant Review Timeline

There are several steps that must be completed during the post grant review process, with shorter timelines than previous methods:

  1. The post grant review petition must be filed no later than nine months after a patent has been issued or reissued. The petition must specify the grounds for invalidity, and must be served on a patent owner. The petition must then be filed and a fee paid according to the filing date.
  2. There is an optional preliminary response time available for the petition that must be issued within three months of the petition filing date.
  3. The post grant review will begin within five months of the petition filing date.
  4. The patent owner has the option to provide a response either three months after the institution of the review or by a time specified by the PTAB. The response should address any grounds not already denied.
  5. One motion to amend the patent is allowed at this time.
  6. There is a period of discovery that is limited to only assertions of fact by each party. Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery.
  7. The petitioner may then provide additional information to support their argument. In post grant review proceedings, a petitioner can assert prior art and other grounds of invalidity (i.e., novelty, obviousness, written description, enablement, indefiniteness, but not best mode).
  8. The PTAB will render a decision no more than one year after the review process begins. This is extendable by no more than six months.

A post grant review can be terminated by the PTAB — either for cause or by issuing a final decision — or by a settlement between the petitioner and patent owner. In order to prevail at a post grant review proceeding, adept and sophisticated legal counsel is necessary.

Williams Mestaz, L.L.P., has the experience and reputation that you want when you are dealing with a business-related lawsuit. We are here to obtain the best possible outcome for your situation. Do not hesitate to contact Williams Mestaz, L.L.P., at (602) 256-9400, and see how we can help you resolve your legal matter.

The information you obtain at this site is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation. We invite you to contact us, though doing so does not create an attorney-client relationship. Please do not send any confidential information to us until such time as an attorney-client relationship has been established. Our description of what we believe to be superior technology and how we win cases reflects our typical approach to litigation, which we believe:  (i) gives us a competitive advantage, and (ii) is responsible for any success we have had. But we do not win every case. Other lawyers may have technology or approaches that they believe gives them an advantage. Also, the results that we have obtained in other cases or that are described in our clients’ testimonials do not guarantee, promise, or predict the outcome of your case, which depends on the law, facts, and evidence specific to it.