Can I Challenge My Competitor’s Patent?

DEREK FAHEY, ESQ.

Yes, a competitor’s patent or published patent application may be challenged, but the correct procedure depends on whether the application is still pending, when the patent issued, and the legal grounds available. Before beginning a challenge, a registered patent attorney should evaluate whether a challenge is necessary and whether the facts support the requested proceeding.

Pre-Issuance Submissions

A pre-issuance submission may be used when a patent application has been published but has not yet issued. A third party may submit qualifying prior art to the United States Patent and Trademark Office so the examiner can consider whether the claimed invention remains patentable in light of that information.

Post-Grant Review

Post-grant review is generally available during the first nine months after a patent issues. A qualifying third party may petition the Patent Trial and Appeal Board to review one or more claims under grounds that can include patent-eligible subject matter, novelty, obviousness, and disclosure or definiteness requirements.

Inter Partes Review

Inter partes review is generally available after the post-grant review window. The proceeding begins with a petition to the PTAB, and the patent owner may submit a preliminary response. The review focuses on novelty and obviousness challenges based on patents and printed publications.

Ex Parte Reexamination

An ex parte reexamination request may be filed during the enforceable term of an issued patent. The requester asks the USPTO to reconsider patentability in view of prior art that was not previously considered, or that warrants consideration in a new way. These requests must follow detailed legal and administrative requirements.

Covered Business Method Review

At the time of the original article, covered business method review provided a specialized PTAB procedure for certain business-method patents, including some software-related patents, when the requesting party had been sued or charged with infringement. The availability of any current challenge procedure should be evaluated under the law and USPTO rules in effect at the time of filing.

The correct strategy depends on timing, standing, available prior art, litigation posture, and the business objective behind the challenge.