U.S. Post-Grant Litigation

Ex Parte Reexam

Who can initiate? – Patent Owner or Third Party

Deadline for Filing – After grant, up to 6 years past expiration

Length of Time – 24-36 months

Basis for Filing – Printed prior art

Overseeing Branch – Different USPTO Examiner

Discovery/Evidence – Declaration

Appeal – PTAB then Federal Circuit (Only Patent Owner)

Extent of Estoppel after Final Decision – None

Post-Grant Review (PGR)

Who can initiate? – Third Party Only

Deadline for Filing – Within 9 months after grant

Length of Time – 12-18 months

Basis for Filing – All grounds

Overseeing Branch – PTAB Judges

Discovery/Evidence – Declaration & Depositions

Appeal – Federal Circuit (Both Parties)

Extent of Estoppel after Final Decision – Both Parties

Inter Partes Review (IPR)

Who can initiate? – Third Party Only

Deadline for Filing – 9 months or more after grant

Length of Time – 12-18 months

Basis for Filing – Printed prior art

Overseeing Branch – PTAB Judges

Discovery/Evidence – Declaration & Depositions

Appeal – Federal Circuit (Both Parties)

Extent of Estoppel after Final Decision – Both Parties