Ever get frustrated by a recalcitrant examiner that thinks all worthy inventions have been patented as of 1975? If so, it may be time to appeal the Examiner to the Patent Trial and Appeal Board (PTAB).
Appealing to the PTAB is optional and can be requested when claims in an application have been twice rejected. The appeal involves filing a notice of appeal and the appeal fees to the PTAB, which then sets the time to submit an Appeal brief and an optional Reply brief to the Examiner’s Answer. While the PTAB can render a decision based on the written submissions, a request for oral hearing before a PTAB panel is available if filed along with the Reply brief. Roughly twelve to twenty four months later, a decision by the PTAB can include a complete reversal of the examiner’s rejections, a partial reversal, or a full affirmance of the rejections.
Full affirmance does not spell the end for the applicant. A request for continued examination (RCE) may be filed after the Board’s decision, along with the appropriate fees, to reopen prosecution. The RCE will allow the applicant to further amend his or her claims and further prosecute his invention.
The USPTO has several post patent grant proceedings, which affords challengers and patentees alike to seek review of the granted patents without having to file an action before the Federal District Courts. Post grant reviews include the following proceedings:
Ex parte Reexamination – a process that allows the validity of a granted patent to be reviewed. Using only prior art patents and publications, process allows the claims to be challenged for novelty (§102) and obviousness (§103).
Reissue – a process that allows the patent owner to correct an error in granted patent, where, as a result of the error, the patent is deemed defective. For example, when a patent contains claims that are deemed too narrow, the patentee can request a reissue application to expand the claims, if filed within two years of the original patent grant.
Inter partes review (IPR) – a contested proceeding for challenging the validity of a patent before the PTAB. A petitioner (not the patent owner) may file an IPR request if the petitioner: (1) has not previously filed a civil action challenging the validity of a claim in the challenged patent, and (2) has not been served with a complaint alleging infringement of the patent more than 1 year prior to the request. The proceeding allows the claims of the patent to be challenged for novelty (§102) and obviousness (§103).
Post grant review (PGR) – a contested proceeding for challenging the validity of a patent before the PTAB, similar to an IPR but allows for additional grounds to be challenged. A petitioner (not the patent owner) may file a PGR request if the petitioner has not previously filed a civil action challenging the validity of a claim in the challenged patent. The proceeding allows the claims of the patent to be challenged for patentable subject matter (§101), novelty (§102), obviousness (§103), double patenting, and written description/definiteness (§112), but not best mode.
