How to File for Patent Invalidation with USPTO | InventionIP

Patent invalidation filings are a strong legal tool that can shield your company from improper patent enforcement. If you feel a competitor's patent should never have been issued—based upon prior art that is already present, obvious, or for any other reason—you have the right to challenge it through processes offered by the United States Patent and Trademark Office (USPTO).

This detailed guide covers all you want to know about filing for patent invalidation with the USPTO, including procedure, requirements, advice, timelines, and examples.

What Is Patent Invalidation?

Patent invalidation is legally trying to invalidate a granted patent. If successful, the USPTO will cancel part or all of the patent claims, making them unenforceable.

Invalidation usually happens when a third party, usually a competitor, initiates a petition following the grant of the patent, claiming that the patent ought not to have been granted because of prior art, obviousness, or technicalities of law.

For example, when Company B sues Company A for infringement, Company A can counterattack by submitting an Inter Partes Review (IPR) or Post-Grant Review (PGR) to invalidate the patent of Company B.

Grounds for Patent Invalidation at the USPTO

Not every patent can be invalidated at will. The USPTO acknowledges certain grounds for invalidation under the law:

• Lack of novelty: The invention was publicly disclosed prior to filing the patent application.
  
  
• Obviousness: The invention would be obvious to one with ordinary skills in the area based on prior art.
  
  
• Prior art: Publications, patents, or products that exist prior to the filing of the patent.
  
  
• Enablement: The patent fails to teach one to employ the invention.
  
  
• Indefiniteness: Claims are too ambiguous or vague.
  
  
• Subject matter ineligibility: The subject matter claimed is not within the categories of inventions for which a patent may be issued.

Each basis has its corresponding procedure based on the age of the patent and type of evidence.

USPTO Procedures for Filing a Patent Invalidation

The USPTO offers two principal post-grant patent challenge procedures: Inter Partes Review (IPR) and Post-Grant Review (PGR). Both are administered by the Patent Trial and Appeal Board (PTAB), a tribunal under the USPTO that decides disputes regarding patent validity.

Inter Partes Review (IPR)

• Available from 9 months after grant of the patent.
• Addresses only prior art in the form of patents or printed publications.
• Typical in defensive patent litigation.
• Must demonstrate "reasonable likelihood" of success to go on.

Example:

In Apple Inc. v. VirnetX Inc., Apple requested several IPR petitions for invalidating network security patents being asserted against it in a $500M+ infringement suit. Although some claims were sustained, others were invalidated and significantly affected the outcome of the case.

Post-Grant Review (PGR)

• Must be submitted within 9 months of patent grant.
• Permits more expansive grounds of invalidity, such as subject matter ineligibility, insufficiency of written description, and clarity problems.
• Best for recently issued patents that seem faulty from the very beginning.

Example:

A medical device startup utilized PGR to invalidate a rival company's overly broad patent on a wearable health monitor. The petition pointed out a lack of novelty and an ambiguous claim scope. The PTAB concurred, and the patent was substantially invalidated before it could be employed in litigation.

Main Steps to File Patent Invalidating

1. Identify the Target Patent

Begin by going over the patent's claims, history of filings, and referenced literature.

2. Perform a Prior Art Search

Dig up any prior patents, publications, or public uses that can cancel out the claims. Use professional patent invalidity search services for comprehensive coverage.

3. Choose the Right Review Type

Employ IPR for older patents and PGR for recent ones (within 9 months of publication).

4. Prepare the Petition

Write a detailed petition with:

• Real party in interest
• Identification of all challenged claims
• Statement of the grounds for challenge
• Claim construction and argumentation
• Evidence (prior art documents, expert declarations)

5. File with the USPTO and Pay Fees

File through the USPTO's PTAB E2E system. Filing fees are between $19,000 and $30,000+ based on the type of review and number of claims.

6. Wait for Institution Decision

The PTAB must decide within 3 months if the petition qualifies for a full trial.

7. Proceed with the Trial Phase (If Accepted)

If ordered, both sides argue and provide proof. A final ruling normally issues within 12 months.

Documentation and Filing Fees Required

When you file your invalidation petition, you need to provide:

• Detailed petition with grounds in law
• References to prior art and mapping to patent claims
• Technical expert declaration(s) (if applicable)
• Party/parties involved or paying for challenge identification

Fees are:

• USPTO filing fees: $19,000+ (for IPR); $20,000+ (for PGR)
• Legal fees: Very widely varying, usually $50,000–$150,000 depending on complexity
• Expert witness expenses, if needed

Tips to Make Your Invalidation Petition Stronger

• Utilize Strong Prior Art: Select art prior to the patent and with similar claims.
  
  
• Attract technical experts: Their affidavits can prove conclusive in intricate or high-value cases.
  
  
• Be Specific: Explain why each claim is invalid under the law. Avoid general accusations.
  
  
• Handle Each Claim Individually: If multiple claims are being attacked, develop separate arguments.
  
  
• Avoid Procedural Blunders: Delays in filings, misplaced declarations, or obscurity in arguments will wreck a case.

How Long Does It Take to Invalidate?

From petition filing:

• Initial review: 3 months
• Institution decision: Upon grant, trial starts
• Trial phase: 12 months from institution
• Grand total: ~15–18 months from original filing

Appeals tack on 6–12 months through the Federal Circuit.

Common Errors to Evade

• Wrong procedure filing: PGR is not available after 9 months; IPR is limited to prior art.
• Disregard for USPTO formatting guidelines: Failure to conform can hold up or deny your petition.
• Dependence on weak prior art: The PTAB denies petitions that have no clear relevance or evidence.
• Failure to hire an attorney: Lack of legal subtlety can send your petition down the drain before it's even begun.

When to Hire a Patent Attorney

While it’s possible to file pro se, patent invalidation is procedurally and technically complex. A skilled patent attorney can help:

• Draft and structure the petition
• Identify high-value prior art
• Prepare expert declarations
• Comply with procedural rules
• Represent you in PTAB hearings or Federal Circuit appeals

Many companies involved in patent litigation treat invalidation as a first line of defense and invest in experienced legal counsel from the start.

Additional Considerations

What Happens If a Patent Is Invalidated?

The rejected claims are legally invalid. The owner of the patent is no longer able to assert those claims in litigation or licensing.

If partially invalidated, the remaining claims are still enforceable unless challenged separately.

Is Invalidation Public?

Yes. All papers, evidence, and rulings in IPR and PGR proceedings are made publicly available via the USPTO PTAB portal.

This openness enables other parties to monitor related cases and avail themselves of invalidation decisions for use in their own defenses.

Can Foreign Patents Be Invalidated This Way?

No. Procedures of the USPTO are used only for U.S. patents. Foreign patents can be invalidated in their home countries under similar post-grant procedures.

FAQs

Q1: Is anyone free to submit a patent invalidation petition?

Yes, anyone outside the applicant—regardless of whether they're a competitor or not—can submit, as long as they comply with the USPTO's filing requirements.

Q2: How is IPR different from PGR?

IPR targets only prior art (patents or published texts) and becomes available 9+ months from the issue date of a patent.

PGR is more general but only becomes available within 9 months of issue.

Q3: May I file more than one petition?

Yes, but each must have different grounds. Or target different claims. Multiple filings in the same matter may be rejected.

Q4: What happens if my petition for invalidation is unsuccessful?

You can still challenge validity in district court cases, though unsuccessful PTAB petitions can reduce your arguments based on legal estoppel.

Q5: How do I identify strong prior art?

Utilize professional invalidity search services or patent databases. The prior art should be older than the patent filing and has to be pertinent to the claims.

Conclusion

Filing for patent invalidation with the USPTO is a strategic, legally powerful response to problematic patents. Whether you’re facing a patent lawsuit or protecting your product roadmap, understanding how and when to file a petition can prevent costly disputes and eliminate weak IP barriers.

Employing the proper procedure, solid prior art, and well-supported arguments is essential. Though effort and expense are involved in the process, the result can literally redefine a competitive marketplace.

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