Inter Partes Disputes in the U.S. Patent Office
In 2011 Congress passed and President Obama signed into law the America Invents Act (AIA) to modernize the U.S. patent system and strengthen America’s competitiveness in the global economy. The AIA created several new inter partes proceedings in the United States Patent and Trademark Office (USPTO) before the newly created Patent Trial and Appeal Board (PTAB) including Inter Partes Review (IPR), Post-Grant Review (PGR), Covered Business Method patent review (CBM) as well as derivation proceedings.
These proceeding, particularly IPRs, have proven to be a very cost effective alternative to litigation in Federal District Court to challenge the validity of an issued patent.
Over the last five years, we have worked to improve our nation’s intellectual property landscape to ensure that America remains a hub for the brightest ideas and most ambitious endeavors in the world.
Inter Partes Review (IPR):
An IPR is a new trial proceeding conducted at the PTAB to review the patentability of one or more claims in a patent. The only grounds that can be raised in and IPR is invalidity under 35 U.S.C. §§ 102 or 103, and the only types of prior art that can be used are patents or printed publications (e.g., no “on sale” challenges). The IPR review process begins with a third party (someone other than the owner of the patent) filing a petition. As often is the case, if the third party is a defendant in a Federal District Court lawsuit, it must file it’s IPR petition within one year of being served with the lawsuit. The petition must comprehensively lay out the petitioner’s arguments for invalidity and claim construction and typically relies on the testimony (in the form of a sworn declaration) of an expert. Three months later, the patent owner may file a preliminary response to the petition. A recent change in the regulations at the USPTO allows the patent owner to submit a declaration of its own expert to rebut the arguments contained in the petition. Approximately two months later, three judge panel at the PTAB issues its decision as whether to institute a trial. An IPR may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claims. This decision, either way, cannot be appealed. If the IPR is instituted, the trial continues until a final determination by the Board one year later. The Board’s final decision can be appealed to the United States Court of Appeals for the Federal Circuit.
Covered Business Method (CBM):
CBM reviews are a transitional program for certain patents that have one or more claims related to a financial product or service. In order to file a CBM, you have to have been sued on the patent. The scope of the CBM review is broader than IPRs in that challenges can be made under §§ 112 and 101. Challenges under § 101 have been particularly successful after the Supreme Court decision in Alice. The procedures for the conduct of the trial in a CBM mirror the procedures for an IPR. The transitional program will sunset for new CBM petitions on September 16, 2020.
Post Grant Review (PGR):
A PGR proceeding is similar to a CBM proceeding, except that the scope of basis for invalidity is much broader covering any grounds that can be brought under paragraphs (2) or (3) of 35 U.S.C. § 282(b). However, the window for filing a PGT petition is narrow as it must be filed no later than nine months after the issuance of the patent. Like an IPR, there no need to have been sued for infringement prior to filing a PGR. PGR proceedings are not transitional. The procedures for the conduct of the trial in a PGR mirror the procedures for an IPR