Analysis of Third-Party Post-Grant Patent Proceedings Under AIA
Once a patent has been granted, there are a number of ways to challenge the enforceability of the patent. A third-party (not the patent owner) may want to attack a patent that has already been granted, for example by establishing that patent is invalid because the patent owner failed to comply with one or more of the basic statutory requirements for patentability under Title 35 of the United States Code, and specifically 35 U.S.C. §§101-103. Invalidity may be established administratively at the U.S. Patent and Trademark Office (USPTO) and/or through the U.S. court system. There are advantages to initiating legal proceedings at the United States Patent Trial and Appeal Board (PTAB), as opposed to the court system. These include quicker and more cost efficient proceedings (for example, by law the PTAB decision in an inter-partes review must be decided within a year of institution), and PTAB judges are patent attorneys who generally have significantly greater subject matter expertise than circuit court judges with respect to patent matters.
Three avenues within the USPTO for asserting post-grant attacks are: 1) post-grant review (“PGR”), 2) inter-partes review (“IPR”), and 3) reexamination (“Reexam”). A patent which survives attack generally enjoys enhanced validity, making it less susceptible to attack.
Below is a table illustrating various criteria to consider when choosing a particular avenue to deal with post-grant attacks.
| PGR | IPR | Reexam | |
| Who Can Initiate? | Only a third-party (not patent owner); cannot be anonymous. | Only a third-party (not patent owner); cannot be anonymous. | Patent owner or third party (can be anonymous). |
| USPTO Filing Fees (subject to change; up-to-date fees can be found here) | Institution Fee: $20,000 + $475 for excess of 20 claims. Post-Institution Fee: $27,500 + $1,050 for excess of 20 claims. These fees are refundable if not instituted. | Institution Fee: $19,000 + $375 for excess of 20 claims. Post-Institution Fee: $22,500 + $750 for excess of 20 claims.
These fees are refundable if not instituted. |
Institution Fee: $6,300-$12,600.
Excess of 3 independent claims: extra $480. Excess of 20 claims: extra $100. These fees are refundable if not instituted. |
| Estimated Average Time For Decision(S) | Institution decision usually within about 7 months of filing Petition. Around 12-18 months after institution for final written decision. | Institution decision usually within about 7 months of filing Petition. Around 12-18 months after institution for final written decision (absent good cause, the PTAB by statue must issue their decision within 12 months from institution of the proceeding.) | Institution decision within 3 months of request. Varies (may be a period of years). |
| Basis That Can Be Raised | Any ground under 35 U.S.C. § 282 (except best mode). | 35 U.S.C. §102 (novelty) and 35 U.S.C. §103 (obviousness) but only based on prior art patents or printed publications. | The party requesting Reexam must raise “a substantial new question of patentability.” Issues of 35 U.S.C. §102 (novelty) and 35 U.S.C. §103 (obviousness) can be brought up only if based on prior art patents or printed publications. |
| Word Limit (provides flexibility with making arguments) | 18,700 words. | 14,000 words. | None. |
| Ability for Third-Party to Participate | No restrictions. | No restrictions. | No third-party participation after initiation or after a reply to the patent owner’s optional statement. |
| Ability to Appeal Decision(s) | No appeal on decision to institute. Can appeal final written decision to the Court of Appeals for the Federal Circuit (“CAFC”) and ultimately the Supreme Court. | No appeal on decision to institute. Can appeal final written decision to the CAFC and ultimately the Supreme Court. | First to the Patent Trials and appeals Board then to the CAFC (third-parties cannot appeal to CAFC) and ultimately the Supreme Court. |
Ultimately, these decisions should be made on a case by case basis depending on the varying factual circumstances. Contact Hoffmann & Baron, LLP if you believe your business needs assistance navigating these complex considerations.
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