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Post-Grant Proceedings

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Below is a comparison of patent 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 as of September 16, 2012

• Applies to all patents at the later of:

  • Nine months after issue, or
  • After the date of termination of the post-grant review (if applicable)
 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 as of September 16, 2012 and until September 15, 2020

• Applies to all patents related to a “financial product or service,” 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 (Civil) OR both raised or reasonably could have raised (USPTO)
Post-Grant Review Anyone other than patent owner • Available as of 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 OR important novel/unsettled legal question Any invalidity ground under 35 U.S.C. § 282 (except best mode) Raised or reasonably could have raised
Ex Parte Reexamination Anyone Available Substantial new question of patentability • Patents

• Published patent apps

• Printed publications

 No legal estoppel
Supplemental Examination Patent owner only • Available as of 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

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