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What Does a Post-Grant Review for a Patent Involve?

On Behalf of | Feb 6, 2023 | Intellectual Property

Applying for and successfully prosecuting a patent is a process that can take years to complete. Depending on the current volume of patent applications and the type of patent that you seek, it may take quite some time to receive a response from the USPTO and even longer for you or the company you represent to receive the actual patent.

Not all patents are able to move forward without challenge or dispute over its enforceability. Some patents will be subject to a post-grant review, or ex-parte reexamination that could lead to the loss of the patent. What does this process entail?

A Third-Party Complaint Triggers Patent Reexamination

Unlike traditional patent examination post-grant review (also called ex-parte reexamination) is triggered by a complaint by a third-party requester other than the patent applicant and the United States Patent and Trademark Office (USPTO). The third-party may be someone who holds a competing patent, for example, and may challenge the claim that a contested patent is truly innovative by arguing that it violates their intellectual property rights.

The requester will typically submit paperwork to the USPTO contesting the patentability of the patent in dispute. The request can be filed at any time during the patent’s term of enforceability, and the requester must demonstrate that the submitted prior art establishes a substantial new question of patentability (SNQ), at which point the USPTO will decide whether grant the reexamination request and possibly order a reexamination of the patent in question.

The examiner will evaluate the patent owner’s statement and/or amendments to the SNQ and issue subsequent office actions on the in response to the patent owner’s arguments. The reexamination process will subsequently be conducted solely between the Patent Office and the patent owner. The examiner can issue up to 3 office actions to the patent; the last of which is a final acceptance or final rejection of the patent’s claims. The patent owner has up to 2 months to respond to each office action.

Therefore defending a patent can be difficult. The fact that a patent has been granted by the examiner does not mean that it will not be contested afterward. Any challenges that affect your company’s intellectual property rights can reduce profit margins and affects future operations. Having the right legal support when addressing a patent-related conflict can help businesses protect their intellectual property.