Post Grant Proceedings

Question 1

Who can initiate Ex Parte Reexamination?

Answer 1

Patent Owner or Third Party, including USPTO Director

Question 2

Who can initiate Reissue?

Answer 2

Patent Owner only

Question 3

Who can initiate Inter Partes Reexam?

Answer 3

Third Party only (not Patent Owner)

Question 4

Who can initiate Inter Partes Review (IPR)?

Answer 4

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

Question 5

Who can initiate Post-Grant Review (PGR)?

Answer 5

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

Question 6

Who can initiate Supplemental Examination?

Answer 6

Patent Owner only

Question 7

Who can initiate Post-Grant Validity Review of Business Method Patents?

Answer 7

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

Question 8

What patents qualify for Reissue?

Answer 8

Any patent

Question 9

What patents qualify for Ex Parte Reexam?

Answer 9

Any patent

Question 10

What patents qualify for Inter Partes Reexam?

Answer 10

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

Question 11

What patents qualify for Inter Partes Review (IPR)?

Answer 11

Any patent (starting September 16, 2012)

Question 12

What patents qualify for Post-Grant Review (PGR)?

Answer 12

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

Question 13

Does the patent qualify for Supplemental Examination?

Answer 13

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.)

Question 14

What patents qualify for Post-Grant Validity Review of Business Method Patents?

Answer 14

Only “a covered business method patent”

Question 15

Window for filing Reissue

Answer 15

Anytime before patent expires

Question 16

Window for filing Ex Parte Reexam

Answer 16

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

Question 17

Window for filing Inter Partes Reexam

Answer 17

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

Question 18

Window for filing Inter Partes Review

Answer 18

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)

Question 19

Window for filing Post-Grant Review?

Answer 19

Starting Sept. 16, 2012, no later than 9 months after patent issuance or issuance of reissue

Question 20

Window for filing Supplemental Examination

Answer 20

Anytime before patent expires

Question 21

Window for filing Post-Grant Validity Review of Business Method Patents

Answer 21

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

Question 22

Grounds for filing Reissue

Answer 22

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

Question 23

Grounds for filing Ex Parte Reexam

Answer 23

§§ 102 and 103 based on patents and publications

Question 24

Grounds for filing Inter Partes Reexam

Answer 24

§§ 102 and 103 based on patents and publications

Question 24

Grounds for filing Inter Partes Review

Answer 24

§§ 102 and 103 based on patents and publications

Question 25

Grounds for filing Post-Grant Review

Answer 25

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

Question 26

Grounds for filing Supplemental Examination

Answer 26

Any "information" relevant to patentability

Question 27

Grounds for filing Post-Grant Validity Review of Business Method Patents

Answer 27

Like PGR, but no § 102(e) prior art

Question 28

Threshold Standard for Reissue

Answer 28

N/A

Question 29

Threshold Standard for Ex Parte Reexam

Answer 29

SNQ of Patentability

Question 30

Threshold Standard for Inter Partes Reexam

Answer 30

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

Question 31

Threshold Standard for Inter Partes Review

Answer 31

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

Question 32

Threshold Standard for Post-Grant Review

Answer 32

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

Question 33

Threshold Standard for Supplemental Examination

Answer 33

SNQ of Patentability

Question 34

Threshold Standard for Post-Grant Validity Review of Business Method Patents

Answer 34

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