Patents
As an Administrative Patent Judge for 9 years and a longtime patent attorney, I have deep experience with patent prosecution and post-issue proceedings.
Patent Prosecution
Patent prosecution is the process of drafting a patent application, submitting it to the Patent Office, and responding to any objections and rejections that the Patent Examiner may issue. It normally takes over a year for the Patent Office to issue a first office action and two to three years to obtain an issued patent.
Utility Patents
A nonprovisional utility patent is typically what one thinks of as a "normal" patent. It covers "any new and useful process, machine, manufacture, or composition of matter." Once issued, a utility patent gives the owner the right to exclude anyone from using the claimed invention without permission.
Provisional Patents
A provisional patent application is a low-cost way to secure an early filing date. Once a provisional is filed, an inventor has 12 months to either file a nonprovisional application or abandon the invention. It does not require the submission of claims, an inventor's oath, or an inventor's disclosure statement (IDS).
Design Patents
A design patent covers the ornamental, nonfunctional aspects of an article. They can usually be obtained in less than two years.
Ex Parte Reexamination
Ex Parte Reexamination (EPR) allows any person to request that the Patent Office reconsider the validity of an issued patent. If a party requesting reexamination ("a requester") can show that there is a "substantial new question of patentability" (SNQ) in view of the prior art patents and publications cited by the requester."
Unlike an Inter Partes Review (IPR), which is decided by the Patent Trial and Appeals Board (PTAB), an EPR is assigned to a Patent Examiner.
EPR can be a valuable and cost-effective way for a patent defendant to challenge the validity of an issued patent.
Inter Partes Review
An Inter Partes Review proceeding is somewhat similar to an Ex Parte reexamination in that it asks the Patent Office to take a second look at an issued patent. It differs in that it is considered by a panel of three judges from the Patent Trial and Appeal Board (PTAB) and it allows the Petitioner to participate in the proceeding. It also has a more expensive filing fee.
In order to gain institution, the Director of the Patent Office (or his designee) must determine that there is "a reasonable likelihood that the petitioner would prevail." In recent years, the Director has tended not to order institution so IPRs have become less common.