The enactment of the Leahy-Smith America Invents Act (AIA) on September 16, 2011, significantly revamped the mechanisms for third-party postgrant challenges to patents within the United States Patent & Trademark Office (USPTO). One of the most significant changes is the replacement of the current inter partes mechanism for challenging patents in the USPTO — inter partes reexamination — with the newly created inter partes review. This change will go into effect on September 16, 2012. Here are five things you should know about the transition from inter partes reexamination to inter partes review.
- Pending inter partes reexaminations will continue under the old system.
There were 1,200 inter partes reexaminations pending at the end of the second quarter 2012, according to official USPTO filing statistics.1 Although no new inter partes reexaminations will be permitted after September 16, 2012, any inter partes reexamination requests filed up to and including September 15, 2012, if granted, will continue unaffected by the new law.
- Some parties who are eligible for inter partes reexamination now will not be eligible for inter partes review.
Defendants in litigation often wait to file inter partes reexaminations for many months after being sued for patent infringement. In some cases, defendants filed inter partes reexamination only after receiving an adverse jury verdict or judgment in district court. This tactic is no longer permitted with the new inter partes review. According to the AIA, “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Accordingly, parties who have been sued for patent infringement will need to act quickly before losing their ability to lodge an inter partes challenge of the patent in the USPTO. In cases where a lawsuit was served on September 16, 2011, or earlier, the only way to institute an inter partes proceeding in the USPTO is to file an inter partes reexamination before September 16, 2012.
- Some parties who were not eligible for inter partes reexamination now will be eligible for inter partes review.
Inter partes reexamination, created by the American Inventor’s Protection Act of 1999, allowed for the first time a postgrant procedure with requester participation. However, only patents filed on or after November 29, 1999, are available for inter partes reexamination. Many third parties who were skeptical of filing an ex parte reexamination due to the limited ability to participate in the proceeding opted not to pursue reexamination at all. Unlike inter partes reexamination, inter partes review is available regardless of the filing date of the patent being challenged. Therefore, those who did not file a postgrant challenge in the USPTO due to the unavailability of inter partes reexamination may reconsider and file an inter partes review after September 16, 2012.
- Inter partes review will generally cost more than inter partes reexamination.
The fee for filing a petition for an inter partes reexamination is $8,800. According to the Proposed Rules under the AIA,2 in order to recover the estimated average cost to the of the processing, services or materials associated with the proceedings, the fee for filing a petition for an inter partes review of the first 20 claims will be $27,200. The proposed fees for inter partes review escalate substantially when the number of challenged claims exceeds 20. Those who want to challenge a patent with a large number of claims may find that filing an inter partes reexamination is a much more cost-effective approach than a inter partes review. They will need to act quickly, though, because inter partes reexamination will no longer exist after September 15, 2012.
- Those interested in a rapid proceeding should wait to file an inter partes review.
There are no statutory time limits for completion of an inter partes reexamination. Although there are some indications that the USPTO has made recent progress in shortening the pendency of inter partes reexamination, its length has been a concern for some. According to the USPTO, the average pendency of an inter partes reexamination, from filing date to certificate issue date, is a little more than 36 months.3 Unlike inter partes reexamination, inter partes review is subject to statutory time limits for completion of 12 to 18 months from its institution. The USPTO has acknowledged these timelines. According to the Proposed Rules,4 the pendency of an inter partes review before the Board, once instituted, is 12 months, extendible by up to six months. Thus, the pendency for inter partes review from filing date should be about 18 to 24 months. Accordingly, those who want a more rapid proceeding may choose to wait until September 16, 2012, and file an inter partes review.