How to Initiate a Post-Grant Proceeding

To request Ex Parte Reexamination, Inter Partes Review, or Post Grant Review of a patent, the requester must file a written request (for Ex Parte Reexamination) or petition (for Inter Partes Review or Post Grant Review) along with the appropriate fee. The request or petition must identify each claim of the patent for which review is requested and must point out: 1) for Ex Parte Reexamination, each substantial new question of patentability based on the cited patents and printed publications; 2) for Inter Partes Review, that the requester has a "reasonable likelihood" of prevailing with respect to at least one claim based on the cited patents and printed publications; and 3) for Post Grant Review, that it is more likely than not that at least one claim is unpatentable or that a novel or unsettled legal question is raised.

A detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination or review is requested must also be included. For non-prior-art rejections (permitted under Post Grant Review), the analysis must state how the claim fails to comply with the statute. Such a detailed explanation is typically provided in the form of a claim chart which compares each element of a challenged claim to specific prior art.

The request or petition must also include a copy of the entire patent along with a copy of every patent or printed publication relied upon or referred to in the request. An English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication is also required.
A third party requester must also provide a certification that a copy of the request or petition has been served in its entirety on the patent owner at the appropriate address. If service was not possible, a duplicate copy of the request or petition must be supplied to the Patent Office.

In addition to the above, an Inter Partes Review or Post Grant Review petition must also include a statement identifying the real party in interest.

For more on the rules and procedures for initiating and conducting Inter Partes Reviews and Post Grant Reviews, see (Final AIA Rules for Post Grant Review, Inter Partes Review and Transitional Program for Covered Business Method Patents).

For more information about procedures and strategy for post grant reconsideration of U.S. patents, please contact RatnerPrestia.