Bench & Bar May/June 2025

FEATURE: INTELLECTUAL PROPERTY

POST-ISSUANCE PATENT INVALIDATION Many non-patent practitioners and pro spective patent holders may be surprised to learn that patents can be partially or wholly invalidated after issuance. 29 After all that time (and money) spent during prosecu tion, a patent may still be invalidated by the Patent Trial and Appeal Board (PTAB)30 and/or a court. 31 There are a few different ways in which a patent may be invalidated post-issuance, but frequently competitors of a patent holder (or alleged infringers of a patent) will file administrative proceed ings in an attempt to invalidate a patent on grounds that allegedly should have been raised during initial prosecution. 32 Common grounds for an attempted inval idation include the omission of prior art, 33 the examiner’s failure to appropriately assess and apply the prior art which was cited in the application, 34 and lack of enablement. 35

POST-ISSUANCE PATENT USAGE

receive a patent. Abandonment may also occur post-issuance of a patent, e.g. , if the applicant fails to pay maintenance fees. Maintenance fees are payable three, seven and 11 years after grant to keep the patent active and enforceable. 24 In some sce narios, an abandoned application may be revived if certain actions (often costly and time-barred) are taken: however, revival of abandoned applications is usually discre tionary for the USPTO. 25 Allowance occurs at the discretion of an examiner, and only with an allowance may an application mature into a patent. An examiner has wide discretion for granting an allowance. Put another way, there is no requirement for an examiner to issue a spe cific quantity of rejections, objections, or allowances in a given office action. How ever, an applicant may petition 26 or appeal 27 an office action if the applicant believes that one or more aspects of any office action is of insufficient quality. 28

In late 2017, Forbes indicated that “[a]round 97% of all patents never recoup[ed] (for the patent holder) the cost of filing.” 36 A patent is only as valuable as someone considers it to be, and a patent covering an innovation that is never sought to be produced or sold may have prosecution costs exceeding its’ monetary value. That being said, many entities – people, corporations, etc. - have become very wealthy from patents. 37 A patent holder may exchange licensing rights for compensation ( e.g. , allow an entity to manufacture and sell the patented product in exchange for a lump sum or a portion of each unit sold). A patent holder may also assert the patent in an infringement law suit ( e.g. , sue an entity that does not hold the patent rights for the damages due to lost profits). To complicate things further, patent rights may become valuable at var ious times. For example, an invention that is ahead of the curve, but otherwise game changing, may be more valuable five years

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