Inter Partes Review
The America Invents Act, in Section 6, creates a new post-grant review proceeding, called inter partes review, which will replace the existing inter partes reexamination procedure. The amendments to 35 U.S.C. §§ 311-318 and addition of 35 U.S.C. § 319 highlight the many differences between this new proceeding and existing practice.
Like the existing inter partes reexamination proceeding, an inter partes review can only be requested by a third party. The petition can request to cancel as unpatentable one or more claims of the patent only on the grounds of novelty or obviousness (35 U.S.C. §§ 102 and 103). Generally, only patents and printed publications may be submitted in support of a request. Expert opinions also may be included if they support the grounds on which the challenge to any claim is based. As with inter partes reexamination, all real parties in interest must be acknowledged in the petition and the grounds on which each claim is challenged must be identified in writing. Finally, the petition must be served on the patent owner. As with all proceedings challenging granted patents, the petition will be made public by the Director as soon as possible.
One major different between inter partes review and pre-AIA inter partes reexamination is the standard used for granting such review. The Director will grant an inter partes review if there is a reasonable likelihood that the third party will prevail with respect to at least one of the patent claims challenged. Under the pre-AIA inter partes reexamination proceeding, the third party had to establish a substantial new question of patentability for the petition to be granted.
An inter partes review may not be instituted if the third party filed a civil action challenging the validity of a claim of the patent before the petition for inter partes review, or the petition is filed more than one year after the petitioner, real party in interest, or privy is served with a complaint alleging infringement of the patent.
Once an inter partes review is requested, the patent owner will have an opportunity to respond, setting forth reasons why no review should be instituted. If the Director does institute an inter partes review, the patent owner will have an opportunity to present evidence detailing why each claim is valid, propose a substitute for any challenged claim, or cancel any challenged claim. Both parties will also have the opportunity to conduct discovery. If the parties come to a settlement regarding patentability, the Director will terminate the inter partes review upon a joint request unless, prior to the filing of the request to terminate, a ruling on the merits has been made.
The decision by the Director whether to institute an inter partes review is final and nonappealable. After the final written decision by the Patent Trial and Appeal Board, the petitioner, real party in interest, or privy is prohibited from filing a civil action under 28 U.S.C. § 1338, initiating a proceeding before the International Trade Commission, or requesting a proceeding before the Office on any ground that was raised or reasonably could have been raised during the inter partes review. Either party is allowed to appeal the decision of the Patent Trial and Appeal Board.
An inter partes review may be requested nine months after the grant of the patent or issuance of a reissue or after the termination of a post-grant review proceeding, if such proceeding is instituted and terminates more than nine months after the patent is granted.
Upcoming Events/Key Dates
Inter partes review became effective on September 16, 2012, and applies to any patents issued before, on, or after that date. The USPTO published the final rules regarding inter partes review on August 14, 2012.