Requests for Reexamination
Correcting USPTO oversights through post-grant proceedings
Despite the exhaustive review that the U.S. Patent and Trademark Office (USPTO) conducts during the patent application process, it is still possible for mistakes and oversights to be reflected in the issued patent. As an applicant, you may be dissatisfied with the scope of the patent issued. As a patent holder or applicant, you may believe that a third party’s purported innovation is not patentable. When you become a client of Benjamin Appelbaum Attorney at Law, we work hard to accomplish your goals and protect your intellectual property.
Requesting reexamination for your own patent
There are several reasons you may want to request a reexamination of your own patent application. When the USPTO issues a denial of a patent application, a request for reexamination, coupled with an appeal to the Patent Trial and Appeal Board, is usually your next step. Even if the patent examiner decides favorably on your application, you may still wish to request a reexamination to correct mistakes in the issued patent. Requesting a supplemental examination allows you to submit additional information relevant to your patent. This can sometimes be a wise decision in anticipation of litigation, although you should consult an experienced attorney before employing these procedures.
Post-grant proceedings for third parties
The recently enacted America Invents Act allows third parties to involve themselves in the patent applications of others through one of four procedures:
- Ex parte proceedings – As the name implies, the ex parte review procedure allows a third party to ask the USPTO to review the patentability of a granted patent but does not allow that party to actually participate in the review. Instead, the review proceeds in much the same manner as an original patent prosecution.
- Inter partes proceedings – Inter partes review is an adversarial proceeding that allows a third party to administratively challenge the validity of a granted patent. This can be a lower-cost alternative to civil patent litigation but must be undertaken within nine months after the issuance of the patent.
- Post-grant review – This type of review allows a third-party petitioner to raise much broader grounds than are available in inter partes proceedings. The third party may initiate post-grant review within nine months of the issuance of a patent.
- Derivation proceedings – This type of proceeding can take place while a patent application is still pending, so long as it is initiated within one year after the patent application was made public. The issue here is not whether the subject matter of the application is patentable but whether the applicant is truly the inventor or, instead, derived the invention from someone else. This proceeding replaces the former interference procedure.
These proceedings in many ways resemble civil litigation although they are generally a lower-cost alternative. Because they use special procedures, it is important to consult a New Jersey law firm that has experience not only with patent law in general but also with the particulars of the various post-grant proceedings.
Work with a former research scientist and veteran patent attorney
Post-grant proceedings before the USPTO can accomplish a variety of goals if used correctly -whether you are an applicant who has recently received a patent or whether you are a patent holder or inventor who believes that a recent application or granted patent infringes on your rights. Once you become a client of Benjamin Appelbaum Attorney at Law, we will guide you through the post-grant process. Call our office at 877-649-6002 during business hours or contact us online at any time to schedule an initial consultation.