If you get a patent granted, others can challenge it. This is likely to happen first during post-grant proceedings, a short time frame that opens up right after your patent is granted. A California multitool patent lawyer from our firm can help you craft your responses to any challenges.
What Are Post-Grant Proceedings For?
The post-grant proceedings give challengers the chance to argue against your newly minted patent. Someone could decide to file a challenge for a wide variety of reasons and any grounds for invalidity are acceptable. A challenge could be based on:
Prior art: Someone can try to argue that your invention lacks novelty or that it is too obvious.
Utility: Something with patent protection can’t just be novel. It also has to have some kind of use.
Lack of description: Anything that you want to patent should be carefully described.
Prior public use: Someone may try to argue that this invention or idea is something that you have already sold or used publicly in the past.
The fee for challenging a patent in post-grant proceedings can be quite high, but don’t just assume that you won’t have to address petitions in the nine months after your patent has been granted. You have to be prepared.
How Can Patent Owners Respond in Post-Grant Proceedings?
You can and should issue a preliminary response before anyone else can even make a claim, essentially saying that there is no good reason for anyone to challenge your patent. It’s not a required step, but it can be a smart move.
Otherwise, you just have to be ready to refute some of the common arguments against certain types of new patents. You have to be ready to show that your invention is unique, not obvious, and that it works.
How Long Does Someone Have to Issue a Challenge?
Someone has nine months after its issuance to challenge a patent on any grounds. In most cases, the board of the Patent Trials and Appeals Board will have their response ready in one month.
It’s important that you have a response to any challenge ready to file. You do not want to have a patent invalidated because you missed a deadline and didn’t notice that it was time to formulate a response of your own.
Do I Need a Lawyer?
It is a good idea to have a lawyer on your side during this process. Yes, it’s an added expense, but think carefully about your patent. How much financial potential does it offer? Wouldn’t you rather have the patent that stands up to challenges and protects your IP rather than just hoping that no one will try to infringe on it? A lawyer who helps you successfully respond to challenges and secure patent protection could end up making up for the costs of their initial services many times over.
Talk to a Patent Attorney
When you need help fending off challenges to your patent, we can be there for you. Contact Burns Patent Law and schedule a consultation to learn more about how a lawyer can help you protect valuable intellectual property and make a compelling case to the USPTO.
