Can I Challenge My Competitor’s Patent?

Yes, you can challenge a patent or patent publication.  Before making a decision to challenge a patent or patent publication, an analysis should be conducted by a registered patent attorney to analyze whether challenging the patent or patent publication is necessary and to evaluate if legal grounds exist for challenging the patent or patent publication.  To learn more about the analysis that should be conducted before challenging a patent or patent publication click here.    There are several different legal proceedings for challenging a patent or patent publication.  The list below explains those different legal proceedings.

1. Pre-issuance submissions

A pre-issuance submission can be used to challenge a patent publication or patent application that has not been granted or issued a patent.  If a patent has not been issued by the United States Patent and Trademark Office (“USPTO”), then you can challenge the patent application by submitting “prior art” to the USPTO before a patent issues. Prior art is evidence that an element of an invention was publically known before a patent application was filed with the USPTO.  After the prior art has been submitted, an examining patent attorney at the USPTO will determine if a patent should be issued in light of the newly submitted prior art.

2. Post Grant Review

A post grant review can be used to challenge an issued patent within nine months after the grant of a patent.  A post grant review can be filed by any person who is not the patent owner and has not filed a civil action challenging the validity of a claim of the patent.  A post grant review is filed with the Patent Trial and Appeal Board (the “PTAB”).  The PTAB will review the patentability of one or more of a patent’s claims.  In reviewing the patentability during a post grant review, the PTAB will consider if a patent claims are valid in light of 35 U.S.C. § 101 (patentable subject matter issues), 35 U.S.C. § 102 (novelty issues), 35 U.S.C. § 103 (obviousness issues) and 35 U.S.C. § 112 (adequate disclosure/definiteness issues).

3. Inter Partes Review

An inter partes review can be used to challenge an issued patent after nine months after the grant of a patent.  The process begins by a third party filing a petition for inter partes review with the PTAB.  The patent owner may file a preliminary response to the petition.  In reviewing the patentability during an inter partes review, the PTAB will consider if the patent claims are valid in light of 35 U.S.C. § 102 (novelty issues) and 35 U.S.C. § 103 (obviousness issues).

4. Ex Parte Reexamination

An ex parte reexamination can be used to challenge an issued patent during the term of a patent.  If the patent has already been issued by the USPTO, then a third party can challenge the patent at the USPTO by filing a request for reexamination of the patent.  An ex parte reexamination can be filed by any person.  A request for reexamination requests that the patent office reexamine a patent in light of newly submitted prior art that was not considered during the prosecution of the patent, or in light of prior art that was considered, but now is to be considered in a new way.  Ex parte reexaminations require documents that include legal arguments drafted according to very specific formats and administrative rules.  It is well advised to seek the help of a registered patent attorney for assistance in preparing and filing a request for reexamination with the USPTO.

5. Covered Business Method Patent Review

A covered business method patent review proceeding can be used to challenge business method patents, including software related patents.  The covered business method patent review proceeding is only available to a party that has been sued or charged with patent infringement. The proceedings are conducted by the PTAB to review the patentability of one or more claims in a covered business method patent. These proceedings are very similar to the to the Post Grant Review proceeding with some differences related to how and what prior art the PTAB will consider during the process.

The patent attorneys at The Plus IP Firm help businesses and inventors compete against their competitors in the marketplace.  The patent attorneys at The Plus IP Firm have helped numerous clients develop goods and services to increase their market share in highly competitive markets.  To schedule a free consultation, click HERE.  For more information about Derek Fahey, this article’s author, click HERE.