Attacking a Patent – Brief Note
Preface
This brief note is not legal advice and is for educational purposes only. It pertains only to US patents.
Discussion
So, you believe a patent should never have been granted, or you have been accused of infringing a patent that you believe is invalid. Fortunately, there are several ways to challenge a U.S. patent.
Not every challenge is appropriate in every circumstance. The proper procedure depends on factors such as the age of the patent, the type of prior art available, whether litigation has begun, and your overall business objectives.
The America Invents Act (AIA) created several administrative proceedings before the Patent Trial and Appeal Board (PTAB) that can provide a faster and often less expensive alternative to district court litigation.
The most common methods of attacking a patent include:
Inter Partes Review (IPR). Used to challenge issued patent claims based only on patents and printed publications showing lack of novelty or obviousness. IPR is frequently used after a patent owner asserts a patent.
Post-Grant Review (PGR). Available only during the first nine months after a patent issues. PGR allows a broader range of invalidity challenges than IPR, including patent eligibility, written description, enablement, indefiniteness, novelty, and obviousness.
Ex Parte Reexamination. Any person may request that the USPTO reconsider issued claims based on patents or printed publications that raise a substantial new question of patentability. Once initiated, the requester generally has no further participation.
District Court Invalidity Defense. A party accused of infringement may assert that the patent is invalid during litigation. Invalidity may be based upon prior art, lack of written description, lack of enablement, indefiniteness, patent-ineligible subject matter, inequitable conduct, or other statutory defenses.
Patent Office Proceedings During Prosecution. If the application is still pending rather than issued, submitting prior art or observations to the USPTO may prevent overly broad claims from issuing.
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