Opposing Patents & Trademarks
As a measure of quality control, the United States Patent and Trademark Office (USPTO) provides administrative proceedings to oppose the validity of a patent and oppose the registration of a trademark. USPTO proceedings can be a cost effective alternative to patent litigation when a primary defense is patent invalidity or if the registration of a trademark would harm the rights of another.
Below we provide a brief overview of the different proceedings available through our firm.
Post Grant Review is a trial proceeding at the US Patent Trial and Appeal Board to review the patentability of a patent on a wide range of issues, including non-statutory subject matter, novelty, obviousness, enablement/written description and double patenting.
Post Grant Review is instituted by filing a petition within 9 months after a patent grants or reissues. After filing the petition, the patent holder may file a preliminary response objecting to the proceeding. The USPTO then determines whether “more likely than not” at least one challenged claim is unpatentable and if so, the Post Grant Review Proceeding is instituted.
Inter Parties Review is a trial proceeding before the US Patent Trial and Appeal Board to review the patentability of a granted patent. Unlike Post Grant Review, Inter Parties Review is limited to invalidity arguments over patents and printed publications.
Inter Parties Review proceedings must typically be filed within 9 months after patent grant or reissue; or the date of termination of any post grant review of the patent. The standard for instituting an Inter Parties Review is whether there is a “substantial likelihood” at least one challenged claim is unpatentable, and if so the Inter Parties Review proceeding is instituted.
At any time during the pendency of a patent, the public can request a patent be re-examined by raising a “substantial new question of patentability.” Reexaminations are typically the least expensive option for challenging the validity of a patent because the requestor is only active in instituting the proceeding and not the proceeding itself.
Cancellation proceedings are carried out before the Trademark Trial and Appeal Board (TTAB). Trademark Cancellation proceedings attempt to cancel a registered trademark. That is, they are filed AFTER trademark registration. Importantly, even if a mark is cancelled, there can still be common law rights to the mark.
A cancellation proceeding requires the petitioner plead that it has standing to petition to cancel because it is likely to be damaged by the registration and there are valid grounds why the mark should not continue to be registered.
After examination, a trademark proceeds to publication for a 30 day period for possible opposition. During this time, the public may oppose the registration of the trademark before the Trademark Trial and Appeal Board (TTAB). Opposing a trademark registration requires the opposer provide standing and plead the grounds for the opposition, typically being that the trademark is confusingly similar to the opposer’s trademark.
Once instituted, the applicant will file an answer. Afterwards, the case moves to discovery and a mini-trial is conducted. Oral arguments are optional. Monetary damages are not awarded in oppositions.