Invalidating a patent with prior art

Under the America Invents Act, this type of re-examination will be replaced with an “reexamination: The challenger will have to establish a reasonable likelihood of prevailing on at least one claim, and not merely a “substantial new question of patentability.” The U. Patent & Trademark Office has a nice FAQ page concerning the published patent applications, and other publications.

According to Cooley’s PTAB Digest database, which contains information about every review ever filed, the USPTO has invalidated some or all challenged patent claims in 86% of cases.

This is a question I’ve heard countless times from clients after receiving a cease and desist letter threatening to sue them for patent infringement.

In addition to the faster time table, post-grant proceedings are typically much less costly than litigation in the federal courts because the USPTO processes focus exclusively on patent validity instead of on patent validity and patent infringement.

Post-grant proceedings are still relatively new, but statistics suggest that they are effective at weeding out bad patents.

However, examiners have huge backlogs and will never be as motivated as a competitor to find prior art.

In addition, certain patent validity issues simply cannot be fleshed out in detail in the patent office.That statue provides: An application for patent for an invention disclosed in … § 120 is not silent on when a continuation must be filed in order to get the parent’s priority date. It expressly states that the application must be filed “before” the parent application issues.an application previously filed in the United States … District Court for the District of Delaware refused to give deference to the USPTO’s interpretation of the statute–which permits same-day filings of continuing applications–and held that “before” means “before”: 35 U. According to the court, in order to show that the parent application was timely filed, Immersion would have to “produc[e] some evidence that it filed the continuation applications before the parent patent issued.” If HTC is correct in asserting that “a patent automatically issues at a.m.Patent challengers can seek to invalidate patents based on all of the same grounds that can be used in court and are not limited to those available in reexamination (or review).The hope is that they will provide a more cost-effective way of challenging patents than court proceedings while still allowing all challengers the full spectrum of bases for challenging validity.Invalidity grounds such as improper inventorship, lack of enablement, indefiniteness, and failure to satisfy the written description requirement cannot be raised.

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