There are numerous proceedings available for challenging published trademark applications, issued registrations and granted patents in the U.S. Patent and Trademark Office (“USPTO”).
Our attorneys are highly experienced in handling these USPTO proceedings.
Trademarks
US Patent and Trademark Office Procedures for Trademark Oppositions and Cancellations
We regularly represent trademark applicants, registrants, opposers and petitioners before the Trademark Trial and Appeal Board (TTAB).
Trademark Oppositions
When a trademark application is published in the Trademark Official Gazette, third parties have 30 days to file an opposition. The opposer must file a Notice of Opposition with the TTAB, detailing the grounds for opposition.
After the applicant responds with an answer, both parties gather evidence, which may include interrogatories, depositions, and requests for documents. The parties may file motions, such as motions to dismiss or for summary judgment.
Testimony and evidence are presented in written form. Oral hearings may also be conducted. The TTAB issues a decision based on the evidence and arguments presented.
Trademark Cancellations
Any party can file a petition to cancel a registered trademark at any time. However, if the mark has been registered for more than five years, the grounds for cancellation are limited. A cancellation is commenced when a petitioner files a Petition for Cancellation.
Similar to opposition proceedings, after the registrant responds with an answer, both parties gather evidence through discovery. Motions can be filed to resolve certain issues before trial.
The “trial” consists of evidence and testimony typically presented in written form.
The TTAB issues a decision based on the trial record.
Ex Parte Trademark Expungement and Reexamination Proceedings
The USPTO offers mechanisms to challenge the validity of registered trademarks that may not be in use as claimed. The two primary ex parte proceedings available are trademark expungement and trademark reexamination. These proceedings are designed to help clear the federal register of unused trademarks and ensure that only marks actively used in commerce are maintained.
An expungement proceeding allows a third party or the USPTO itself to request the removal of a registered trademark on the grounds that the mark has never been used in commerce in connection with some or all of the goods or services listed in a registration. A petition for expungement can be filed between three and ten years following the registration date of the trademark.
A trademark reexamination proceeding allows a third party or the USPTO to request a review of whether a trademark was in use in commerce on or before the relevant date, which is typically the date the registrant claimed use in their application. A petition for trademark reexamination can be filed at any time following the registration date.
Patents
US Patent and Trademark Office Post-Grant Patent Procedures
The Patent Trial and Appeal Board (“PTAB”) is a tribunal within the USPTO that decides patentability questions for issued patents raised by third parties. The PTAB conducts patent post grant review proceedings including inter partes review, post-grant review, the transitional post-grant review for covered business method patents, and derivations.
Ex Parte Reexamination
A request for reexamination must be filed with the USPTO, including the submission of prior art that raises a substantial new question of patentability (“SNQ”) regarding one or more claims of the patent. The requester must provide a detailed statement explaining how the prior art impacts the patent’s claims.
Once an SNQ is identified, the USPTO issues an order for reexamination. The patent owner is notified and given an opportunity to respond to the prior art and the SNQ.
A reexamination proceeding generally addresses only issues relating to novelty and obviousness and, under limited circumstances issues raised by newly added subject matter in an amendment. In addition, a reexamination proceeding must be based on prior art consisting of patents and printed publications. A reexamination proceeding does not address issues involving public use or sale, not on other grounds such as inequitable conduct or improper inventorship.
After the initial request, the third-party requester has no further participation in the process. It is primarily a communication between the patent owner and the USPTO. The process is designed to be quicker and less expensive than litigation, aiming to provide a streamlined method for reviewing patent validity.
Ex parte patent reexamination provides a mechanism for re-evaluating the validity of a patent in light of new prior art, ensuring that only patents that meet the standards of patentability remain enforceable. It is a useful tool for patent owners to strengthen their patents or for third parties to challenge potentially invalid patents in a cost-effective manner.
Inter Partes Review
A person who is not the owner of a patent may file with the Office a petition to institute an inter partes review (“IPR”) of the patent.
An IPR petition may request cancellation as unpatentable one or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.
If an inter partes review petition is, the patent owner has the right to file a preliminary response to the petition, within a time period set by the Director, that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter.
Inter partes review is a trial proceeding conducted at the PTAB to review the patentability of one or more claims in a patent only on novelty or obviousness grounds, and only on the basis of prior art consisting of patents or printed publications.
For first-inventor-to-file patents, the IPR process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. These deadlines do not apply to first-to-invent patents.
The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the PTAB will be issued within 1 year (extendable for good cause by 6 months).
An IPR may not be instituted if, before the date on which the petition for such a review is filed, the petitioner filed a civil action challenging the validity of a claim of the patent. If the petitioner files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files an IPR petition, that civil action shall be automatically stayed until the patent owner moves the court to lift the stay; or the patent owner files a civil action or counterclaim alleging that the petitioner has infringed the patent; or the petitioner or moves the court to dismiss the civil action.
Post-Grant Review
Post-grant review may be sought in more circumstances than inter partes review. Claims can be challenged if they are directed to non-patentable subject matter, such as abstract ideas, natural phenomena, or laws of nature. Claims can be invalidated if they are not novel or obvious to a person having ordinary skill in the art at the time of the invention based on a combination of prior art references. Other grounds that may be asserted in a PGR include insufficient disclosure (lack of enablement, lack of written description, indefiniteness), double patenting, lack of proper inventorship, prior public use or sale, derivation, fraud or inequitable conduct.
Transitional Program for Covered Business Method Patents (“TPCBM”)
Only available for business method patents, a petition to review the patentability of one or more claims in a covered business method patent can be filed any time, but not if the patent is already under PGR.
TPCBM proceedings employ the standards and procedures of a post grant review, with certain exceptions.
Derivation Proceeding
A derivation proceeding is a new trial proceeding conducted at the Board to determine whether (I) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application.
