Reexamination, supplemental examination and AIA trials
Reexamination, supplemental examination and AIA trials
After grant, a patent can be revisited by ex parte reexamination (anyone, patents and publications), supplemental examination (owner only, any information) or an AIA trial at the PTAB: inter partes review, post-grant review or a derivation proceeding. Each has its own who, when, what and threshold.
Reexamination and AIA trials·2 min read·4 sections
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Must-know for the exam
✓Ex parte reexamination: any person, any time during enforceability, patents and printed publications, substantial new question (35 U.S.C. 302-303)
✓Decision on a reexamination request within three months; owner statement within two months of the order; requester replies only to it (MPEP 2241, 2249)
✓No broadening amendments in reexamination (35 U.S.C. 305)
✓Supplemental examination: owner only, up to 12 items per request, any information; shields against unenforceability for what is considered (35 U.S.C. 257; 37 CFR 1.605)
✓IPR: non-owner, 102/103 on patents and printed publications, after 9 months from grant; 1-year bar after service of a complaint (35 U.S.C. 311, 315(b))
✓IPR threshold: reasonable likelihood of prevailing on at least one claim; institution decision unappealable (35 U.S.C. 314)
✓PGR: within 9 months of grant, any invalidity ground except best mode, more-likely-than-not threshold, first-inventor-to-file patents (35 U.S.C. 321-324)
✓Preliminary response within 3 months of the filing-date notice (37 CFR 42.107(b))
✓Final written decision within 1 year of institution, extendable up to 6 months (35 U.S.C. 316(a)(11))
✓Petitioner proves unpatentability by a preponderance of the evidence (35 U.S.C. 316(e))
✓Trials construe claims under the Phillips standard used in court (37 CFR 42.100(b))
✓IPR estoppel: grounds raised or that reasonably could have been raised (35 U.S.C. 315(e))
✓Derivation petition: within 1 year of first publication of the claim to the same invention (35 U.S.C. 135(a))
▸On this page · 4 sections
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Traps that cost marks
→Thinking an IPR can be filed the day the patent issues.
→Counting the year from the court filing date instead of service.
→Mixing up the grounds available in IPR and PGR.
→Confusing the three institution standards.
→Confusing reexamination with supplemental examination, which only the owner may request.
→Thinking the requester can comment whenever it likes.
→Choosing reexamination for information that is not a patent or publication.
→Thinking any amount of information can go in one request.
Choosing a proceeding
Reexam
Supplemental exam
IPR
PGR
Who
Anyone
Owner only
Non-owner
Non-owner
When
Any time
Any time
After 9 months
Within 9 months
Grounds
102/103 on patents and publications
Any information
102/103 on patents and publications
Any ground except best mode
Threshold
Substantial new question
Substantial new question
Reasonable likelihood
More likely than not
35 U.S.C. 257, 302-303, 311-314, 321-324
Where to look
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