PTO Reconsideration of Validity of Issued U.S. Patents

The procedures for reconsidering patentability in the USPTO were drastically changed and new procedures were added in September of 2011, when Congress passed and the President signed The Leahy-Smith America Invents Act (AIA). Section 6, Chapter 31 and Chapter 32 of that act eliminate Inter Partes Reexamination and establish Inter Parte Review and Post Grant Opposition, respectively.

Reconsideration of a patent in the PTO may allow a third party to challenge patent validity without (or in addition to) going to court or may allow a patentee to confirm the validity of the patent. The purpose of this Guide is to identify the different paths for U.S. patent reconsideration and to provide general insights and strategies to consider in pursuing reconsideration of an issued U.S. patent.

Decisions required to implement a Post Grant Strategy involve the bases for questioning validity, the urgency for review, the interest of a challenger in participating in the review process, the timing of the review and estoppels vis-à-vis related litigation, perceptions of the tribunals handling the different procedures, etc. Other considerations are How to Initiate these procedures, as well as considerations of Estoppel and Intervening Rights.

For summaries of AIA- implemented changes in Post Grant procedures, and implementation rules and changes effective September 16, 2012, please see:

New USPTO Procedures and Rules, Effective September 16, 2012

U.S.P.T.O. Issues Final Rules on AIA Supplemental Examination

Final AIA Rules for Post Grant Review, Inter Partes Review and Transitional Program for Covered Business Method Patents

Enactment of America Invents Act Will Result in Significant Changes to Post-Grant Patent Reconsideration Options