Note: This is Part 1 in a three-part series. If you’re already comfortable with how inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. works, you may want to skip to Part 2.
If you watched the Senate hearing last week, you heard a lot of talk about [define term=”inter partes review”].
Inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. (IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.) is an incredibly useful procedure created by the America Invents Act (AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding.), and opponents of patent litigation reform are trying to gut it.
The Basics of Inter Partes ReviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review.
First, let’s start with what inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. actually is. After the USPTOUnited States Patent and Trademark Office. See also PTO. grants a patent, there are a few ways to ask the USPTOUnited States Patent and Trademark Office. See also PTO. to take another look: [define term=”ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. reexamination”], inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review., [define term=”post grant review”], and [define term=”covered business method review”].
In each type of procedure, a third-party can ask the USPTOUnited States Patent and Trademark Office. See also PTO. to determine whether a patent is invalid. The USPTOUnited States Patent and Trademark Office. See also PTO. grants the petition (i.e., agrees to review the patent) based on how likely the challenge is to succeed.
Inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. is limited: the only grounds for filing a petition are that the patent was disclosed or suggested by an earlier patent or printed publicationThe term applied when a patent application or issued patent is made public. Normally required 18 months after filing. A feature unique to the U.S. patent system allows patent applicants who limit their application solely to the United States to delay publication until the patent is issued by the USPTO.. There are also timing rules.
For patents filed pre-AIA (before March 17, 2013), inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. can be brought any time. For patents filed on or after March 17, 2013, the patent must be at least nine months old and any post grant reviews must be complete. (Post grant reviews must be filed within the first nine months after a patent issues.) And if the petitioner has been sued for infringing the patent, there’s a 1-year window in which to file the petition, which starts on the date the complaint was served.
Unlike reexaminationThe process by which the USPTO conducts an examination of a patent after it has issued, undertaken upon written request by a member of the public who establishes that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. The pre-AIA standard was that there be "substantial new, the AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. reviews (including inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review.) are conducted by a panel of three Administrative Patent Judges (APJs) on the Patent Trial and Appeals Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.), not patent examiners. APJs are all patent attorneys, and they’re all experienced practitioners.
The panel will grant a petition for inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. if it determines that there is a reasonable likelihood that the challenged patent is invalid. If the petition is granted, the panel will have a trial and make a determination of validity. Final panel decisions can be appealed to the Federal CircuitSee CAFC.
There is real risk for a petitioner. Once you file an inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review., you can no longer argue (in court or at the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.) that the patent is invalid on any grounds that you raised or reasonably could have raised. So losing at the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. basically means your invalidity arguments are done.
In Part 2, I’ll look at the complaints that some patent owners are making about IPRs.