Chart Example

April 15, 2013

USPTO Trials & Post-Grant Proceedings

	Post Grant Review	Inter Partes Review	Ex Parte Reexamination
Eligibility	Any “First-to-File” patent	Any issued patent	Any issued patent
Timing	Within 9 mos. of issuance	“First-to-File” patents: Later of 9 mos. after issuance or conclusion of any PGR “First-to-Invent” patents: After issuance Pending litigation: One year after complaint served	After issuance
Available Challenges	§§ 101, 102, 103, 112, including public use/ on sale	§§ 102, 103; limited to printed publications	§§ 102, 103; limited to printed publications
Initiation Threshold	More likely than not that at least one claim is unpatentable	Reasonable likelihood that petitioner will prevail on least one challenged claim	Substantial new question of patentability
Petitioner/ Requestor Participation	Active in all stages	Active in all stages	Initial Request only (may reply to Patent Owner’s Statement, if filed)
Discovery	Depositions and documents	Depositions and documents	None
Decision Maker	USPTO PTAB (3 APJ panel)	USPTO PTAB (3 APJ panel)	Central Reexamination Unit (3 patent examiners)
Duration	1-1½ years from Petition	1-1½ years from Petition	1-3 years from Request
Estoppel	Grounds raised or could have been raised	Grounds raised or could have been raised	None
Appeal	Either party may appeal to the Fed. Cir.	Either party may appeal to the Fed. Cir.	Patent Owner may appeal to the USPTO PTAB and thereafter to the Fed. Cir.
Anonymity	No	No	Yes