Inter Partes Review of Patents

Inter Partes Review

The America Invent Act (AIA) brought new changes to the way the United States Patent and Trademark Office (USPTO) conducts review of patents challenged by third parties. Some of these changes include new rules to institute an inter partes review of a patent with a new standards for showing of sufficient grounds to initiate the proceeding that has now replaced the inter partes reexamination. Like the older review process, inter partes review allows patent owners to respond with written responses and oral hearings. Additionally, the new procedures provide for new discovery rules and motions to amend the patent claims. Moreover, time periods for completing the review process have been streamlined for efficiency.

Inter partes review is available to third parties as a means to challenge one or more claims to patents. Inter partes review proceedings are conducted and decided by the Patent Trial and Appeal Board. What may be challenged via these proceedings is limited, however, and inter partes review only allows challenge to the patentability of one or more claims based on §§ 102 or 103 ground. This limits challenges to questions of patentability arising from anticipation and obviousness, and only on the basis of patents or printed publications- so claims of prior invention by another, invalidity challenges under § 101 or evidence of sales prior to the filing of the patent application are not be proper basis for a challenge in inter partes review.

In order to petition for inter partes review, a petition must be filed no earlier than nine months from the date of issuance of the challenged patent. Moreover, an inter partes review proceeding must be initiated at the latest of (a) the date that is nine months from the date of issuance of the patent being challenged, or (b) after any post-grant review has been determined.

The patent’s owner(s) may respond to the petition for inter partes review, with a preliminary response.Typically, a patent owner has three months to submit a preliminary response otherwise the Board will not consider any statements from the patent owner in granting or denying the petition to review. Thus, the patent owner need not respond or provide their input when a petition for inter partes review is filed. The Board will review the petition to see if the petitioner has established a reasonable likelihood that the petitioner would prevail with respect to at least one claim that is being challenged. If the petition is filed improperly, or the Board finds it does not meet the standard, the petition will be denied and the Board will not conduct the proceeding. If on the other hand, the Board determines that the petition was timely filed, contained the appropriate fee, and meets the standard, the Board will grant review. Of course, a patent owner may submit written statements in order to sway the Board otherwise, so long as these statements or written preliminary response is submitted within three months.

Challenges to petitions for inter partes review may include attacking a petitioner’s standing, in the event that a petitioning party has previously filed a civil suit such as a declaratory action of invalidity of the patent. The idea is that if the courts have already been involved, then the USPTO will allow that process to take place rather than conducting a similar proceeding. Other grounds may include challenging the evidence provided in the petition, or basing a challenge on estoppel grounds.

Requirements to Petition for Inter Partes Review of a Patent

When submitting a petition for initiating an inter partes review proceeding, the petition must include the following:

1. A fee must be submitted; the fee for a petition to initiate inter partes review is about $23,000.00 (subject to changes to USPTO fees), with about $14,000.00 being refundable in the event the petition is denied.

2. The petition must identify all real parties in interest.

3. The petition must identify, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including:

(A) Copies of patents and printed publications that the petitioner relies upon in support of the petition and

(B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.

4. The petition must provide copies of any of the documents required under paragraphs (2), (3), and (4) of 35 U.S.C. 312(a), as amended, to the patent owner or, if applicable, the designated representative of the patent owner.

Procedures During Inter Partes Review

During the proceeding, patent owners are allowed to cancel any challenged claim or amend the claims in response to one or more arguments that have been presented. Just like in trial proceedings, motions to amend, and to advance settlement of the proceeding are allowed. Amendments to the claims however must not enlarge the scope of the claims or introduce new matter.

The goal is for the Board to make a determination within a year from the start of the review process, although this timeframe may be extendable for up to six months. Inter partes review is available to challenge any issued  patent regardless of whether it was issued under the new first-to-file provisions of the AIA or the first-inventor-to-invent provisions applicable to all patent applications filed before March 16, 2013.

Valuable Alternative to Litigation

Litigation, particularly patent litigation, can be so expensive so as to cripple a business. Inter partes review proceedings, although costly, are a great alternative to parties that have been threatened or given notice that a patent may be asserted against them. Since these proceedings have a set timeline and are significantly streamlined for greater efficiency than say traditional patent litigation, it may be wise to speak to your attorney about the process.