Partner – Litigation Practice Chair
John Skeriotis
Areas of Practice
Intellectual Property, Patent, Trademarks, Copyright, Internet Law, Litigation, Licensing
When you go to file for any type of IP protection, you run the risk of it being rejected, but your chances are higher depending on which type you file for. Of all the options, patents receive the most government oversight due to the nature of patents as technology. A new technology or technique usually ends up being a part of a new product that can affect an industry as it currently operates. This, in turn, affects the economy that the federal government has to care for. While copyrighted material has the potential to do the same, it’s not as common.
To deal with this added pressure, patent petitions can be challenged. If someone believes that a patent is not different enough from another, either to say it’s infringement or not patentable, there are Post-Grant Reviews. Not everything can be patented, and not every patent is good for the industry.
The attorneys at Emerson Thomson Bennett have extensive experience with helping clients get their patents approved, so contact us for help before you have to face a Post-Grant review.
What is the Post-Grant Review?
If you’re filing a patent for the first time, or this is the first time your patent has been challenged or hit a pitstop, you might not know what a Post-Grant Review is. They’re trials that the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) oversees to decide whether you or someone else can be granted a patent.
Who is the USPTO?
The USPTO oversees patents to ensure that they are not infringing on other patents or on the rules of what a patent can be. It’s also important for them to keep a record of patents, trademarks, and more. This way, they can act as a public resource so individuals, small businesses, and corporations can avoid developing technology, techniques, and brands that are similar to or already owned by someone else.
Why Would Your Patent Be Challenged?
There are many reasons why another individual or entity would want to challenge your petition for your patent. They may see it and your potential success as a threat or something that makes their own patent obsolete.
There is also the possibility that your patent legitimately infringes on theirs, or they have reason to believe that it does. The Patent Trial and Appeal Board themselves may see an issue with your patent’s filing or that it infringes on something. There are many reasons why your petition for your patent may be challenged, but only a few legal reasons are considered during the Post-Grant Review trial.
- Prior art: The PTAB finds reasonable proof to believe that your patent is infringing on another pre-existing patent.
- Lack of enablement: The description used to explain the patent does not explain how someone with the intended skills can make or use what is in the patent.
- Lack of written description: There isn’t a proper description of the patent. In this instance, the patent isn’t completed as it should have been before being filed.
- Lack of utility: The patent doesn’t seem to be useful in any way, whether the point is to entertain or help complete a specific skill.
- Claim indefiniteness: Your patent petition is unclear, and the PTAB isn’t sure what the patent is supposed to be for.
- Lack of structure: If your patent is made, submitted, and petitioned while in a state that’s hard to decipher, the PTAB will need you to clarify it at a Post-Grant Review trial.
If your patent is facing any of the prior accusations, you’re going to need help explaining your patent to the court. To avoid this happening at all, you should have Post-Grant Review attorneys.
