Ing. Mariana I. Vernieri
U.S. Patent Agent
Registered with the USPTO
Registration No. 77275
+1 (561) 809-2760
Post Grant Procedures
Challenge a granted patent or defend yours!
Patent Reexamination
Even after a patent is granted, the USPTO offers various mechanisms to re-examine granted patents, either at the request of the patent owner or of another person, as the case may be. In most cases these procedures are handled by Patent Attorneys, since they usually involve the need to establish a legal strategy, which only they are authorized to do. However, Patent Agents are also authorized to represent clients in these administrative proceedings before the PTAB (but not in Court). If you are being advised by a Patent Attorney and they have recommended that a ex parte reexamination, inter partes review, supplemental examination, covered business method review or post grant review is advisable for your case, Patentes USA we can help you carry out the procedure professionally and effectively, while saving significantly on professional fees. Likewise, we can represent you if you are the patent owner and someone has initiated one of these procedures against you.
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In addition to these procedures, ask us about: Protests, Pre-Issuance Submissions, Certificates of Correction, Reissues and others.
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The Procedures
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Ex parte reexamination is a procedure by which a third party can request that a patent be canceled based on Prior Art discovered after its grant. Once the procedure has begun, there is no interaction between the requester and the examiner.
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Inter partes review is used to ask the PTAB to review the patentability of certain claims of a granted patent on grounds of obviousness or lack of novelty based on patents or printed publications. The person who initiates it must be a third party, who must show that there is a reasonable likelihood of prevailing on at least one of the challenged claims for it to be instituted. Unlike the "ex parte" procedure, in this procedure the petitioner does actively participate.
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Supplemental examination is a procedure initiated by the patent owner when they want certain patentability issues reviewed in light of a new discovery. It is useful to prevent possible allegations of invalidity or inequitable conduct. When the request is granted, the procedure leads to an Ex Parte reexamination.
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Post Grant Review allows the patentability of one or more claims of a granted patent to be challenged before the PTAB on grounds beyond prior art. For example, the grounds may be that it is non-patentable subject matter, that it was invented by someone else, proof of prior sale or public use, problems with the description, etc. This procedure must be started within 9 months of the patent grant.