How to connect the response and invalidation procedures of US patent OA, reply first or invalidation first

Conclusion given first: In most cases, the examination opinion (OA) is first responded to, and the US patent invalidation procedure is used as an alternative or parallel means, rather than being invalidated immediately. The reason is that there is a statutory 3-month deadline for OA responses, which can be extended to 6 months. Once the application is missed, it will be considered abandoned; Although the one-year threshold for both parties' review is tight, preparations can still be made simultaneously during the response period. First, use OA to respond and strive for authorization. If the authorization is invalidated after being sued, the initiative will be greater.

The 3-month response from OA is a hard deadline, and any extension requires payment

There are two types of examination opinions issued by the United States Patent and Trademark Office: non final examination opinions and final examination opinions. The response deadline is usually 3 months, and an extension of up to 6 months can be requested. The extension fee increases gradually on a monthly basis, with large entities receiving approximately $200 per month, small entities receiving half of the fee, and micro entities receiving further reductions. In practice, it is generally recommended to provide a comprehensive response within the deadline and not to easily use extensions, as the delay record will affect the pace of subsequent application strategies.

If OA is the final opinion, there are only three response options: a response after submitting the final opinion, submitting a request for further examination, or appealing to the Patent Trial and Appeal Board. Many clients may think that the final opinion is hopeless when encountering it for the first time, but in fact, a considerable proportion of cases can persuade the examiner to withdraw the final opinion and authorize it through phone communication with the examiner after the final opinion.

The one-year threshold for invalid programs, once passed, is gone

The mainstream procedure for invalidation of US patents is mutual review, in accordance with the provisions of US patent law regarding mutual review. Its mandatory time window is that the applicant must submit the infringement lawsuit within one year from the date of receipt. After more than one year, unless there are justifiable reasons (such as being subsequently added as a defendant), the Patent Trial and Appeal Board will directly refuse to file a case. This one-year threshold is a pitfall for many overseas companies - after being sued, they are busy responding, reconciling, and negotiating authorization, and by the time they remember to file for invalidation, the window has already closed.

So the order of judgment is: first check if there is any infringement lawsuit. If there is a lawsuit, the one-year countdown will start immediately; Without litigation, there is no time pressure for invalid procedures, and we can wait for the OA's response before making a decision. That's also why the principle of 'reply first or invalidate first' cannot be applied uniformly, and a clear timeline must be calculated.

Reply and invalid evidence can be reused, but the standards are different

The existing technology used in the OA response can also be used in invalid programs, but the threshold for the two is different. In the OA response, the examiner judged based on the standard of "advantageous evidence"; The same standard applies to invalid filing and final decision, but the committee's interpretation of the claims has tended to be consistent with local courts after recent precedents. A prior patent or public publication may be accepted by the examiner in OA, but may be denied in invalidation proceedings due to differences in the interpretation of the claims. It is generally recommended to organize materials according to the evidence standard of invalid procedures when responding to OA, and use them in two places at once.

In addition, the review by both parties can only be based on patents and printed publications, and cannot be supported by evidence of public use or sale. This is different from the OA response - in OA, examiners can cite publicly available evidence, but invalid procedures are not allowed. If your invalid evidence is mainly for public use, then this path is not feasible, and you need to consider a re examination after authorization or a defense of invalidity by the local court.

Reply to three typical scenarios of OA first

Scenario 1: OA is not the final opinion and there is no infringement lawsuit. There is almost no doubt that this situation needs to be addressed first by narrowing the claims and replacing them with authorization, with minimal investment.

Scenario 2: OA is the final opinion, and a copyright infringement warning letter has been received but no lawsuit has been filed yet. The warning letter does not trigger a one-year threshold, and the final opinion can be responded to first, while preparing invalid materials. If the response fails, there is still time for further appeal or invalidation.

Scenario 3: OA is the final opinion and has already been sued. At this point, the one-year countdown is already running, and it must be done in parallel: while making the final opinion response, invalid requests must be submitted within one year. In this situation, invalid procedures often have to be one of the main battlefields, because the committee's review intensity of invalid reasons is different from that of the examiner, and whether to file a case depends on the specific reasons and evidence combination.

When advancing in parallel, the court may suspend the lawsuit

If the local court lawsuit and the invalidation procedure are conducted simultaneously, the defendant may request the court to suspend the lawsuit and wait for the committee's decision. In practice, whether the court approves the suspension depends on whether the invalid procedure has been filed, at which stage of the litigation, and whether the same claim is involved. Many customers may think that if they file an invalid lawsuit for the first time, the court will automatically stop, but in fact, it is not - they should actively file a motion, and the earlier they file, the better. If the lawsuit has reached the stage of hearing for the interpretation of claims, the court is usually unwilling to stop.

This is also another layer that needs to be calculated clearly for 'reply first or invalidation first': if the invalidation is raised too late and the court keeps going, you will have to play two games at the same time, doubling your investment and energy. When evaluating, draw the three lines of litigation schedule, filing schedule, and OA response deadline together and find the intersection.

Budget and business goals determine the final choice

The account should be divided into three parts: OA response expenses, invalid program expenses, and litigation expenses. OA responses are usually in the thousands of dollars range; The total cost of the review process by both parties is much higher than this, and official fees are calculated based on the number of claims; Lawsuits may reach the level of millions of dollars. If your product's sales in the US market are not high, it may not be cost-effective to force it to fail, and it is more practical to settle or design around it.

On the other hand, if the sued patent is a key obstacle to your core product, or if you have multiple products targeted by the same patent, this investment is worth it. It is generally recommended to conduct a patent stability analysis first to see if there are any obvious invalidity points in the claims of the target patent before deciding whether to invest. The expenditure for stability analysis is usually within ten thousand US dollars, which is much more rational than blindly proposing ineffective measures.

Practical Judgment Checklist

Summarize it into a list: check if there are any infringement lawsuits, and if there are, start the one-year countdown; Based on the type of OA, non final opinions should be given priority for response, while final opinions should be considered as dual line responses; Based on the type of invalid evidence, only patents and printed publications can go through mutual review; In terms of commercial value, the core product is worth fighting for and ineffective; See if the court can suspend it, the earlier it is raised, the more advantageous it is. Go through these items in order, whether to reply first or invalid first, you will basically have the answer.

If you are dealing with US patent OA or receiving infringement warnings, first organize your application history, examination opinions, cited documents, and litigation schedule into a timeline before discussing strategies. Director Shen Jinlong is accustomed to drawing three timelines side by side when evaluating such cases, first looking at deadlines, then at evidence, and finally at business goals.

This article is compiled by Guangdong Zhiming Law Firm and is based on current laws, regulations, and practical experience in the United States. It is for general reference only and does not constitute a legal opinion specific to a particular case. The strategy of patent invalidation and OA response should be comprehensively judged based on the facts of the case, the content of the claims, and the litigation schedule. Before taking action, please consult a practicing lawyer.