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Audrey Millemann is a shareholder with Weintraub Tobin and practices in the Intellectual Property and Litigation sections. She is a litigator and a registered patent attorney.  Audrey advises clients on all issues of intellectual property law, including infringement, validity, and ownership of patents, trademarks, and copyrights.

The validity of a United States patent can be challenged in federal court litigation.  Patents can also be challenged in the U.S. Patent and Trademark Office, which, in most cases, is a quicker and less costly process.

The PTO provides three procedures by which a patent can be challenged: inter partes review (IPR), post grant review (PGR), and ex parte reexamination.  In IPRs and PGRs, the challenger and the patent owner both participate, and the proceedings are handled by the Patent Trial and Appeal Board (PTAB).  In an ex parte reexamination, the challenger is not involved after the request for reexamination has been filed, and the proceeding is handled by the PTO examiners.

In IPRs and PGRs, anyone except the patent owner may file a petition to challenge the patent.  The filing fees are high, $41,500 for an IPR and $47,500 for a PGR, with additional fees depending on the number of claims challenged.  The proceedings are handled by a three-judge panel of administrative judges with technical background in the field of the patent.  There are two phases in these proceedings.  The first phase consists of the filing of the petition by the challenger, the filing of a response by the patent owner, and the decision whether to institute the IPR or PGR by the PTAB.  If the PTAB institutes the IPR or PGR, then the second phase (the trial phase) begins.  The second phase consists of discovery (more limited than in litigation), briefing, an oral hearing, and a final written decision by the panel.  The entire process from institution to the final decision should take no more than 12 months.  The parties may appeal the decision to the Federal Circuit Court of Appeals.
Continue Reading How to Challenge a Patent in the PTO

Is it possible to legally protect an idea?  The answer is: not really.

Intellectual property is intangible personal property.  There are four types of intellectual property that are protected by law:  patents, copyrights, trademarks, and trade secrets.  A separate set of laws governs each one.  Although ideas may be intangible personal property, ideas do not

In my last column, I discussed the first argument that should be made in overcoming an obviousness rejection made by the patent examiner in a patent application.  If possible, the applicant should argue that the examiner has failed to establish a prima facie case of obviousness because the examiner did not make the required factual findings.  However, there are several additional arguments that may be applicable.

First, in relying on prior art references for the rejection, the examiner cannot pick and choose only one aspect of a prior art reference and exclude other aspects of the reference or ignore the central teaching of the reference.  “It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”  In re Wesslau, 353 F.2d 238 (CCPA 1965).
Continue Reading More Ways to Overcome Obviousness

Most patent applications are initially rejected on obviousness grounds by the patent examiner in the US Patent and Trademark Office.  That means that the examiner believes that the invention, as set forth in the claims in the application, would have been obvious to a person of ordinary skill in the art at the time the application was filed.   Usually, the rejection is based on one or more prior art references – documents that are publicly available as of the application’s filing date.  In making such a rejection, the examiner states that a person skilled in the art would have found it obvious to modify the teachings of the cited prior art references to achieve the claimed invention.

There are several ways to overcome this type of obviousness rejection.  The applicant can argue that the examiner is incorrect in the interpretation of the prior art references, and that those references do not teach or disclose what the examiner contends.  The applicant can also argue that, although the examiner may be correct in interpreting the prior art references, the examiner is incorrect in concluding that a person skilled in the art would have found the claimed invention obvious based on those  references.  Or, the applicant can amend the claims to add an element that is not taught or disclosed in the references.
Continue Reading Arguing Obviousness with the Patent Examiner

An inter partes review (IPR) is a procedure to challenge a patent in the U.S. Patent and Trademark Office (PTO). The IPR procedure was established by the American Invents Act, and was intended to be an improvement on the existing inter partes reexamination procedure. An IPR is brought before the PTO’s Patent Trial and Appeal Board (PTAB), which handles the proceeding and decides the outcome.

Any person can file a petition requesting an IPR of an issued patent. The petition must show that at least one claim of the patent is unpatentable on the grounds of anticipation (35 U.S.C. §102) or obviousness (35 U.S.C. §103). The petitioner must prove unpatentability by a preponderance of the evidence. The PTO decides whether to grant the petition.
Continue Reading PTAB May Decide Patentability Under Section 101 in Inter Partes Reviews