Overview Of The Trial Proceedings Conducted By The USPTO

The United States Patent and Trademark Office (USPTO) introduced several new trial proceedings that are now available for reexamining or challenging issued patents. These procedures are an attempt to streamline the process of reviewing issued patents, and to minimize the costs to challengers or patent owners, by providing a less costly alternative to litigation. While some of these new procedures prescribed by the America Invents Act (AIA) apply to patents issuing from patent applications subject to the first-inventor –to-file provisions of the AIA, some apply to patents issued before, on, or after the AIA took effect.

Below are the basics of each of these new trial proceedings. The new proceedings include Post Grant Review proceedings (an entirely new proceeding), Inter Partes Review (an adaptation of the old Inter Partes Reexamination proceeding with a new standard of review), and the Transitional Program for Covered Business Method Patents (CBMP).

Post-Grant Review

This new type of trial proceeding enables the review of patents issued under the first-to-file provisions, or patent applications that issue into patents with a filing date on or after March 16, 2013. Under these new proceedings, a qualifying patent may be reviewed by the Patent Trial and Appeal Board (the Board) for questions of patentability of one or more claims in the patent. Any ground that could be raised under 35 U.S.C. § 282(b)(2) or (3), may be raised in these proceedings, which provides for a wide range of challenges at an early stage of an issued patent. For example, qualifying patents may be challenged under the Post Grant Review proceedings for invalidity on grounds of anticipation, obviousness, or violations of section 112 (with the exception of challenges under the best mode requirement), or requirements under section 251.

The challenges a third party may bring via a post-grant review proceeding must be presented in the very by petition during the first nine months of the patent’s existence (and are only available to third parties as oppose to patent owners). That is, only third parties, and only during the first nine months after the grant of the patent, may petitions to review or challenge the patent under post-grant review be granted. Of course, patent owners are involved and able to respond to these challenges via responses to the issues raised; patent owner responses are called preliminary responses to the petition.

As with the new standard for granting inter partes review proceedings, post-grant review will only be granted if the third-party challenger shows that it is more likely than not that at least one claim challenged is unpatentable. If granted, the Board will 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

Like the new post-grant review proceeding, Inter partes review is only available to third parties as a means to challenge one or more claims to patents. These proceeding, like all the new proceedings discussed in this article, are overseen and decided by the Board. Unlike post-grant review however, inter partes review only allows challenge to the patentability of one or more claims based on §§ 102 or 103 ground. That is challenges to issued patents via an inter partes review proceeding are limited 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.
Additionally, inter partes review proceedings are available only after nine months have lapsed since the date of issuance of a patent. In other words, an inter partes proceeding must be initiated, if ever, after any post-grant review has been determined, or after the date that is nine months from the date of issuance of the patent being challenged. The patent owners may respond to the petitions for inter partes review.

Inter partes review proceedings may be granted to third parties only if they are able to meet the new standard, which replaces the old “substantial new question for patentability” standard of the prior inter partes reexamination proceedings. Under the new standard, the petitioner must show that “there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim that is being challenged.” If granted, the Board will make a determination within a year from the start of the review process, although this timeframe may be extendable for up to six months.

Unlike post-grant review proceedings however, 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.

Transitional Program for Covered Business Method Patents (TPCBM)

The proceedings under the TPCBM are similar to both post-grant review and inter partes review proceedings, but are only available to review patents eligible as business method patents. Also, while the TPCBM is available for all patents regardless of whether they were issued from a first-to-file or first-to-invent patent application, generally a party may not file a petition for a TPCBM unless that party has been sued for infringement of the patent or charged with infringement under the patent. Furthermore, the TPCBM proceedings are relatively temporary; that is, review of business patents under the TPCBM will only be available until September 16, 2020, when the program is set to terminate.