There are three available types of post-issuance challenges to the validity of a patent: (1) Inter Partes review; (2) Transitional Program for Covered Business Method Patents; and (3) Post-Grant Review. Another option not included in this table is a derivation proceeding, which challenges the ownership of a patent.
|
Proceeding |
Applicability |
Legal Standard for Review |
Invalidity Grounds |
Timing |
Additional Info |
Fees |
|
Inter partes review (IPR) |
Available since September 16, 2012, for any patent |
Reasonable likelihood that the petitioner would prevail with respect to at least one of the claims
|
Limited to patents, published applications and printed publications
|
First-to-invent patents: any time after issuance of the patent First-to-file patents: at least nine months after issue date of the patent but no earlier than termination of any PGR of the patent |
Estoppel on any grounds of invalidity that was raised or could have been raised; may not be filed if petitioner has challenged validity of patent in court or litigation pending for more than one year; patentee may seek to amend claims |
Request fee of $9,000 plus $200 for each claim in excess of 20
Post-institution fee of $14,000 plus $400 for each claim in excess of 20 |
|
Transitional Covered Business Method Patent Review (CBM) |
Available since September 16, 2012, for any patent |
More likely than not that at least one claim is unpatentable
|
Any invalidity grounds (including broadened AIA §18(a)(1)(c) definition of prior art) except for best mode |
Any time after issuance for patents filed before March 16, 2012, if sued for infringement or charged with infringement or nine months after issuance for first-to-file patents |
Expressly limited to covered business method; sunsets Sept. 16, 2020; estoppel on any grounds of invalidity that was raised; patentee may seek to amend claims
|
Request fee of $12,000 plus $250 for each claim in excess of 20
Post-institution fee of $18,000 plus $550 for each claim in excess of 20 |
|
Post-grant Review (PGR) |
Patents that contain, or contained at any time, any claimed invention having an effective filing date on or after March 16, 2013 |
More likely than not that at least one claim is unpatentable
|
Any invalidity grounds except for best mode |
Within nine months of the issue date; also available for reissue patents except for claims that are identical to or narrower in scope than the claims in the original patent which issued more than nine months prior |
Estoppel on any grounds of invalidity that was raised or could have been raised; may not be filed if petitioner has challenged validity of patent in court or litigation pending for more than one year; patentee may seek to amend claims |
See CBM fees above |