A comparison of patent cases’ post-grant proceedings available at the USPTO. For further details on each proceeding, visit the links at the top of the page.
|Proceeding||Who may seek?||When does it apply?||Legal standard?||Grounds?||Estoppel?|
|Inter Partes Review||Anyone other than patent owner||• Available starting September 16, 2012• Applies to all patents – beginning nine months after issue (i.e., after Post-Grant Review window)•||Reasonable likelihood that petitioner would prevail on at least 1 challenged claim||• Patents• Published patent apps• Printed publications||Raised or reasonably could have raised|
|Covered Business Method||Anyone other than patent owner||• Available starting September 16, 2012• Applies to all patents related to “financial services” but excludes “technological innovations”||• More likely than not that at least 1 claim is unpatentable• Petitioner sued or “charged with infringement”||Any invalidity ground||Narrow: Raised (USPTO and Civil)|
|Post Grant review||Anyone other than patent owner||• Available starting September 16, 2012• Applies only to patents having a claim with a priority date on or after March 16, 2013, within nine months of issue•||More likely than not that at least 1 claim is unpatentable||Any invalidity ground||Raised or reasonably could have raised|
|Ex Parte Reexamination||Anyone||Available now||Substantial new question of patentability||• Patents• Published patent apps• Printed publications||No legal estoppel|
|Supplemental Examination||Patent owner only||• Available starting September 16, 2012• Applies to all patents||Substantial new question of patentability would result in Ex Parte Reexamination by PTO||Any information||N/A|
|Derivation Proceedings||Inventor only||Applies to all claims with priority dates on or after March 16, 2013 (Interference remains available for others)||Claimed invention derived from another||N/A||N/A|