What Happens When You Get a Patent Revocation?

What Happens When You Get a Patent Revocation?

by Cindy DeRuyter, Esq., February 2019

In the U.S., any person can ask the U.S. Patent and Trademark Office (USPTO) to re-examine an approved patent. If prior art or publications show that your claims are not new, the USPTO may invalidate, or revoke, your patent, which means that your rights are surrendered. You can appeal this kind of revocation in federal court.

Procedure for Revocation of Patents in the U.S.

Anyone can pursue the revocation of an already-issued patent. There are two main reasons the USPTO may complete a re-examination:

  1. Citation of prior art: according to 35 U.S. Code Section 301, patents may be re-examined upon a showing of prior art, including other patents or printed publications, that someone believes could be relevant to any claim.
  2. Ex parte re-examination: a second option involves raising a new question of patentability. See 35 U.S. Code Section 302 for a complete explanation of ex parte re-examination procedures.

There are certain conditions for the revocation of patents. To request re-examination of a patent, an applicant must:

  1. Submit a written request for re-examination to the USPTO.
  2. Pay the then-current examination fee. As of January 2019, these fees range from $150 to $2,200, depending on the size of the entity and the type of patent claim being examined.
  3. Explain how applying the prior art is pertinent. When requesting an ex parte re-examination, applicants must provide a statement that identifies each new question of patentability based on prior patents and printed publications.

The USPTO sends copies of re-examination requests to affected owners after receipt, and the citation of prior art becomes part of the patent's official file.

Understanding and Appealing an Adverse Patent Re-Examination Decision

The USPTO may invalidate or revoke patent rights on the following grounds:

  • Not novel: if the re-examination shows that every element of your claim was found in the same prior art or publication reference, the USPTO may invalidate your patent on the grounds that it is not new.
  • Not inventive: revocation is possible if the patented thing fails the "obviousness" test because two or more prior publications or art references, when combined, show each element of your claim.

If you receive a notice with an adverse re-examination decision from the Board of Patent Appeals and Interferences, you have two months to file a challenge in the Federal Circuit Court of Appeals. To challenge the initial determination:

  1. File a written notice of appeal with the USPTO.
  2. File a copy of the notice with the U.S. Court of Appeals for the Federal Circuit with required fees.
  3. Notify all other parties involved in the re-examination proceeding of the appeal by serving copies of the notice of appeal.

While your appeal is pending, you may not enforce your patent rights.

When you are ready to apply for a patent or protect other intellectual property, work with an online service provider. Alternatively, you may want to hire an intellectual property attorney in your area. Having trusted resources at your fingertips can give you valuable peace of mind so you can use your patent, trademark, or copyright with confidence.