Patent Invalidation: The Early Bird Gets the Worm
Inventors and manufacturers often hit a roadblock called a patent. A question often asked to a patent attorney is “how can I get a patent invalidated or have a pending patent application rejected by the examiner?”
With the enactment of the America Invents Act (AIA) the message to parties looking to invalidate a patent or have a pending patent application rejected is clear:
Act quickly, or your bank account is going to take a beating.
How to Get a Competitors Patent Application rejected
In a process, known as pre-issuance submission, anyone can throw a monkey wrench into a pending patent application examination by submiting relevant prior art or publications to the patent examiner.
The examiner can use that prior art information to make a ruling that the invention is not new and reject the patent application.
The fee for filing this submission is only $180 per 10 documents ($90 per 10 documents for small entities).
How to Get a Competitors Patent Invalidated
Once a patent has been granted any member of the public may request that the patent be re-examined by ex parte reexamination or inter partes review and may submit evidence as to why the patent should be invalidated.
In an Ex parte reexamination the filing party does not participate in the examination process.
In an Inter partes review, the filing party continues to participate in the examination process.
However, once a patent has been granted by the USPTO the process becomes quite a bit more costly.
Filing fees and costs:
- $12,100- large entities (over 500 Employees)
- $6,050- small entity (less than 500 Employees)
- $3,025- micro entities (individuals with less than four patents files and gross annual income under $150,000)
Another difference between a pre-issue submission and an inter partes review is that there is a whole litany of legal requirements that goes along with the submission. Which of course means additional legal fees to prepare all the documents.
What must be included in filing for an inter partes review:
- Identify all real parties in interest
- Identify all claims challenged and all grounds on which the challenge to each claim is based
- Provide copies of evidence relied upon
- Show grounds for standing
- Provide a claim construction for each challenged claim
- Specifically explain the grounds for unpatentability
- Specifically explain the relevance of evidence relied upon
Standard:
Tthe party filing for inter partes review must show they are likely to succeed on at least one of the patent claims which they are challenging.
USPTO filing Fees
- $12,000- large entity
- $6,000– small entity
- $3,000- micro entities
What must be included in a filing for ex parte re-examination:
Only a submission of relevant previous prior art or previous publications. The patent Examiner will independently examine these documents and determine whether to proceed with reexamination.
Standard:
The examiner will independently determine if submitted prior art and/or publications raise “substantial new question of patentability.”
If the Examiner decides there is a substantial question of patentability, the reexamination process will commence. Similar to pre-issuance submission but unlike inter partes review, the filing party will have no say in this process.
Patent Owner Options:
If there is determined to be an issue of patentability under either inter partes review and ex parte re-examination, the patent owner can:
- Cancel the Claims
- Narrow the Claims
- Add new claims, so long as they are not broader than the original claims.
What it all means:
With the enactment of the AIA, the message to aspiring inventors is clear. If you’re looking to invalidate a patent in order to sell a product, keep up on current applications and have the patent application rejected before before it is officially granted.
Although keeping an eye out for pending patent applications may be a difficult task, it may end up saving thousands of dollars in filing and attorneys fees.
