Can a Patent Be Revoked? IPR, Reexamination, and Other Ways Patents Get Canceled

Can a patent be revoked? Yes. A granted US patent can lose some or all of its claims if the USPTO or a court finds them invalid. The main routes are inter partes review, post-grant review, ex parte reexamination, and a court challenge. Each has its own deadlines, grounds, and burden of proof.

What does “revoked” mean for a US patent?

US practice rarely says “revoked.” The usual terms are invalid, unpatentable, or canceled, and the result often applies claim by claim. A patent can lose one claim and keep the rest, so a challenge does not always end in total defeat.

Each claim is also presumed valid on its own. Under 35 U.S.C. § 282, a patent is presumed valid, and each claim stands independently, even if a claim it depends on is later found invalid. The party attacking the patent carries the burden of proof.

Can the USPTO cancel a patent after it is granted?

Yes, through three proceedings. Inter partes review and post-grant review are adversarial trials before the Patent Trial and Appeal Board. Ex parte reexamination sends the patent back to an examiner. Anyone other than the owner can start an IPR or post-grant review.

• Inter partes review (IPR). Under 35 U.S.C. 311, a challenger asks to cancel claims as unpatentable for lack of novelty or obviousness, using only earlier patents or printed publications. The petition can be filed after the later of nine months from grant or the end of any post-grant review.

• Post-grant review. Under 35 U.S.C. 321, the petition must be filed within nine months of grant. The grounds are broader, covering any invalidity ground under section 282(b)(2) or (3).

• Ex parte reexamination. Under 35 U.S.C. 302, anyone can request it at any point, citing earlier patents or publications and explaining how they apply to each challenged claim.

How does inter partes review work?

The challenger files a petition, the Board decides whether to start a trial, and the Board issues a final written decision. The challenger must show it is more likely than not that the claims are unpatentable. That standard is lower than the one used in court.

Both sides face a clock. Under 35 U.S.C. 315(b), an IPR cannot be started if the petition comes more than one year after the challenger was served with an infringement complaint. Under 35 U.S.C. 316(a)(11), the final decision is due within one year of the Director starting the review, with up to six more months for good cause.

Losing also has a cost. After a final written decision, the petitioner is barred under 35 U.S.C. 315(e) from raising grounds it raised or reasonably could have raised in later USPTO, court, or International Trade Commission proceedings.

How does ex parte reexamination work?

The requester files a written request with the fee. Within three months, the Director decides whether the cited art raises a substantial new question of patentability. A decision that no new question exists is final and cannot be appealed.

If reexamination goes forward and ends, the USPTO issues a certificate that cancels claims found unpatentable, confirms claims found patentable, and adds any amended or new claims. Under 35 U.S.C. 307(b), people who made or used the subject matter, or prepared to, before the certificate issued keep the same protections that apply to reissued patents.

Can a patent be revoked in court?

Yes. A defendant sued for infringement can argue invalidity in court, and the grounds are wider than in an IPR. They can include failing a condition of patentability or the written description and enablement rules of 35 U.S.C. 112. The challenger must give written notice at least 30 days before trial identifying prior patents, publications, and prior users.

The burden is heavy. In Microsoft v. i4i (2011), the Supreme Court held that invalidity must be proved by clear and convincing evidence. That is one reason a challenger might choose the Board, where the standard is a preponderance of the evidence. Our post on what to do when your product may infringe a patent covers the options facing the accused side.

Can a patent end without anyone challenging it?

Yes. A utility patent expires if its maintenance fees go unpaid past the grace period. That is expiration, not revocation, and the USPTO may accept a late payment in some cases if the delay was unintentional. Our post on how long a mechanical patent lasts explains the fee schedule and expiration.

Patents also end at the close of their term. A utility patent lasts up to 20 years from filing, and a design patent lasts 15 years from grant.

How can patent owners lower the risk of losing claims?

The strongest protection is built before filing: a thorough search, a complete description, and claims drafted with fallback positions. Our inventor FAQs note that examination turns on obviousness as well as novelty, so that that features can be combined from several references.

• Search deeply. Our post on patent search versus freedom to operate explains what each search answers.

• Disclose what you know. Failing to give the Patent Office known material information can lead to a granted patent being held unenforceable, per our FAQs.

• Draft with fallbacks. A claim set with narrower positions gives you something to defend if broad claims fall.

• Get an opinion. We provide invalidity and noninfringement opinions, listed on our practice areas page.

Frequently Asked Questions

Who can challenge a patent?

Anyone who does not own the patent can file an IPR or post-grant review, and anyone can request ex parte reexamination. A defendant can also challenge a patent in court.

Does a granted patent mean it is valid?

It is presumed valid, which is not the same as being proven valid. The presumption can be rebutted at the Board or in court.

How long does an IPR take?

The final decision is due within one year of the Director starting the review, extendable by up to six months for good cause. That does not include the time before the review begins.

Talk to a Patent Attorney

Sleman & Lund LLP provides patent preparation and prosecution, legal opinions and IP due diligence, and offers free consultations for patent matters. Review our practice areas, then book a free consultation online or contact us.

Phone: (732) 795-0505

Email: sleman@patentspace.net

Office: 4400 U.S. 9 South, Suite 1000, Freehold, NJ 07728