The USPTO is often criticized for allowing worthless or junk “developments” to be patented. As a business, you may be threatened with a competitor asserting a newly issued patent. The new patent may apply to your long standing device or business method. You may think that either you must submit to the demand for licensing the right to use or practice the newly patent “development” or face the large expense of a patent infringement lawsuit.
There are options: One is to simply push back against the asserted licensing offer or threatened lawsuit. You can communicate evidence that the patent is not invalid, e.g., the “development” was previously known or used. Another option is attempt to alter your device/product or business method to avoid the scope of the new patent.
Yet another option is to initiate your own lawsuit requesting a civil court to issue a declaratory judgment that the patent is invalid, e.g., there is existing prior art or that the patent subject matter was an obvious change in existing practice and therefore it is not an “improvement” worthy of patent protection. However, initiating a federal lawsuit is an expensive endeavor.
Another option is to file a petition with the USPTO requesting the Patent Office review the allowance of patent coverage. This is the procedure of Post Grant Review. The Post Grant Review procedure, however, must be initiated within 9 months of the grant of patent coverage.
Although petitioning from Post Grant Review will require you to retain qualified legal counsel, the costs may be less than the costs of initiating or defending a challenge to an issued patent.
Discussion of Post Grant Review:
The basis for challenging a patent through the USPTO Post Grant Review procedure is very broad. (Comparison should be made to Inter Partes Review.)
The challenge may be based upon the patented subject matter is, in fact, not eligible subject matter. This challenge could be based upon 35 U.S.C. Section 101, e.g., the subject matter merely comprises an abstract idea, law of nature, or mathematical algorithm. For example, subject matter that is merely utilizing a computer to perform a task previously performed by an individual is not patentable. Also a mathematical formula or law of nature cannot be patented. (You will need legal counsel to assist in making this determination.)
Also, the competitor patent can be challenged on the basis that the subject matter is not new. For example that the patented device or business method has previously been performed or used in commerce. Also that the “development” was in fact merely an obvious variation of existing devices or methods. These challenges utilize sections 102 or 103 of 35 U.S.C. (Unlike a challenge made against a patent under the procedures of Inter Partes Review, the prior art asserted against the patent is not limited to prior patents or other published documents. Your petition can be based on prior business practices or events.)
Also the patent can be challenged on the basis that the specification does not adequately inform a person skilled in the art how to use or make the invention. (This is the enablement burden required even of provisional applications.) Another basis is that the specification does not show that the competitor or patent owner was, in reality, in possession of the invention, i.e., the patents specification does not disclose knowledge of all the elements required of the claims. (This is close to but distinct from the enablement requirement. Again, there is not a “bright line” test.)
Post Grant Review is initiated by filing a petition with the USPTO. The petition must be filed within 9 months of the award of the patent. The focus of the petition is that one or more of the enumerated patent claims are invalid based upon the broad criteria stated above.
The Post Grant Review is fast and cost effective:
To be successful, the petition must show that the listed justifications, if not adequately rebutted (by the patent holder/competitor) would show that it is more likely than notthat at least one claim is unpatentable.
Upon filing of a petition, the patent holder/patentee/competitor is provided a copy. The patentee has two months to respond. The USPTO will have 3 months to evaluate the petition and response. If the petition is deemed to have merit, the US Patent Trial and Appeals Board (PTAB) will initiate the review and will have 12 months to decide whether one or more of the challenged claims are to be cancelled. During the pendency of the proceeding, the patentee/patent holder/competitor will be effectively barred from bringing any infringement action. Therefore the competitor cannot intimidate you with the threat of being faced with an expensive lawsuit.
Note that the you must meet two thresholds, i.e., first, demonstrate that the grounds stated in the petition has merit and second, provide evidence that the claims should, in fact, be cancelled. The burden of proof is “preponderance of evidence”.
Note that the examiner plays no role in deciding the petition. Note also that the PTAB does not conduct a trial, but rather makes its decision based upon written evidence, which can include deposition testimony, i.e., sworn answers to written or oral questions. Although conducting depositions or other discovery proceedings in expensive, the expense of trial preparation and multi-day trial proceedings is avoided. Discovery is also expressly limited to “evidence directly related to factual assertions advanced by either party”. This is significantly narrower than the discovery standard of federal civil litigation. Therefore the costs of discovery should be limited.
Negative Factors of Post Grant Review:
It must be remembered that if a patent is challenged under a Post Grant Review proceeding, the challenging party will not be able to defend in any subsequent infringement action (assuming the Post Grant Review was unsuccessful in invalidating the patent) on a basis or rationale that was or reasonably could have been raised in the Post Grant Review proceeding.
A patent is open for broad attack under a Post Grant Review proceeding. Although it is necessary to engage qualified legal counsel to evaluate and prepare a petition for filing, the cost should be substantially less than either defending a patent infringement lawsuit or initiating an action for a Declaratory Judgment in federal court. A Post Grant Review proceeding is conducted before a panel of three USPTO administrative law judges. The proceeding is independent of the examiner that determined the “improvement” was patentable. (The examiner may be presumed to be biased in favor of his/her earlier determination of patentability.)
©David McEwing 2019
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