This month, on September 16, 2012, post allowance proceedings as defined by the American Invents Act (AIA) begin, including Inter Partes review (IPR), Post Grant Review (PGR), and Business Method PGR. A table comparing these different post allowance proceedings, as well as current Ex parte reexamination proceedings, can be found at the end of this article, following a discussion of the various proceedings.
Also on September 16, 2012, Inter Partes reexamination requests will no longer be accepted. The new proceedings allow the opportunity to request review of any U.S. patent over a broad range of reasons and engage in a limited discovery. The new law is found at 35 U.S.C. §§ 321 – 329. Some of the most distinguishing features of these proceedings compared to reexamination are the ability to obtain some discovery, a decision within one year, and estoppel.
Third parties can use IPR to request review of any U.S. patent for anticipation or obviousness. A transitional post grant program also exists for challenging business method patents. PGR, which provides review of unpatentable subject matter, double patenting, lack of written description and indefiniteness as well as anticipation and obviousness based on art that is not limited to patents and printed publications, will not be available since only patents filed on or after March 16, 2013 are eligible. PGR will be available as soon as patents issue under the new first-to-file rules. Ex parte reexamination remains substantially unchanged except for an increase cost.
While these proceedings were enacted in September 2011, the U.S. Patent and Trademark Office only recently issued the final rules at 77 FR 48680 (2012-08-14). Additional rules covering the rules of practice before the newly-named Patent Trial and Appeal Board published at 77 FR 48612 (2012-08-14), a trial practice guide at 77 FR 48756 (2012-08-14) and miscellaneous rules published at 77 FR 46615 (2012-08-06).
There are numerous discussions about these proceedings, most of which were based on the proposed rules. However, there are a number of differences between the proposed rules and the final rules as well as some discussions that clarify the USPTO’s understanding of the laws and rules that govern these post grant proceedings. Some of the more relevant differences are:
- For ex parte reexamination, the final rules do not require a statement identifying the real party(ies) of interest. A certification that the estoppel provisions do not prohibit the request can be filed by the practitioner requesting the reexamination. 37 CFR §1.510(b).
- The total time to a decision in IPR and PGR is limited to one year after grant of the petition. However, the time allowed to the patent owner to respond, both in a preliminary response and in the patent owner response is increased from two months to three months. 37 CFR §§42.107(b) and 42.207(b).
- The patent owner does not have to motion to amend the claims. A single motion to amend the claims is allowed by right. Any additional motion(s) to amend “may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement.” 37 CFR §42.121(c).
- While the AIA allows for a limitation in the number of petitions allowed each year until 2016 (i.e., limited to 281/year), the USPTO is not limiting the number of petitions. 77 FR 48680, 48688 (2012-08-14).
- The step-wise and escalating fee structure based on the number of challenged claims has been replaced with a flat fee per claim for each claim over 20. The fee for PGR is $800/claim and the fee for IPR is $600/claim. 37 CFR § 42.15.
- The lead counsel in filing a request for IPR or PGR must be a member of the patent bar.
- Post grant proceedings will only be instituted in the minimum threshold of more likely than not (PGR) or reasonable likelihood of success (IPR) is met. This threshold is applied on a claim-by-claim basis.
The USPTO expects approximately 460 inter partes reviews and 50 post-grant reviews (this is limited to the transitional business method PGR) to be filed in the next year.
The post-grant review procedure will offer more opportunities to challenge U.S. patents without resorting to litigation, but will also come with the risk of estoppel. Additionally, the whole process has been intentionally streamlined to focus the proceedings on the major issues. Thus, considering the right path to follow and preparing the petition/response will require careful planning and forethought.
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Some of the more important provisions are listed in the table below, which includes Ex Partes Reexamination:
Click here to view table.