The PTO has been busy this year drafting rules for implementing the America Invents Act (AIA). Proposed rules implementing post-grant review and inter partes review, both directed to third-party challenges of issued patents, were published in February, and with the public comment period having recently ended, final rules will be issued in the coming months. Highlights of both are set out below.
Both proceedings take effect on September 16, 2012. Inter partes review, which will replace inter partes reexamination, applies to patents issued before, on, or after September 16, 2012. 35 U.S.C. §311(c)(2). Post-grant review, on the other hand, applies to patents subject to the first-inventor-to-file provisions of the AIA, i.e., those filed on or after March 16, 2013 (35 U.S.C. §321(f)(2)), and so it will be some time before a post-grant review proceeding takes place. A post-grant review petition must be filed within 9 months of the issuance of a patent (37 C.F.R. §42.202(a)), while a petition for an inter partes review cannot be filed until after (i) 9 months from issuance or (ii) termination of any post-grant review of a patent (37 C.F.R. §42.102(a)). In both cases, the petition must be filed before the petitioner files a civil action challenging the validity of a claim of the patent. 37 C.F.R. §42.101(a) and §42.201(a). Both proceedings, once instituted, shall normally be completed within a year, with a six month extension available for “good cause.” 37 C.F.R. §42.100(c) and §42.200(c).
A petition for inter partes review must identify specific statutory grounds under 35 U.S.C. §§102 or 103 on which each claim is challenged based on patents and printed publications (37 C.F.R. §42.104(b)(2)), and must demonstrate a “reasonable likelihood” that the petitioner will prevail as to at least one of the claims challenged (37 C.F.R. §42.108(c)). A post-grant review petition, by contrast, can challenge claims on any grounds under 35 U.S.C. §§101, 102, 103, or 112, except for best mode (37 C.F.R. §42.204(b)), and must establish that it is “more likely than not” that at least one of the claims is unpatentable (37 C.F.R. §42.208(c)). A patentee, in response to either petition, may file a preliminary response within two months. 37 C.F.R. §42.207(a) and (b), and §42.107(a) and (b).
Both petitions will be expensive: an inter partes review petition will cost $27,200 for up to 20 claims, and a post-grant review petition will cost $35,800 for up to 20 claims, with significant increases for each additional set of 10 claims. 37 C.F.R. §42.15.
Post-grant review and inter partes review, once instituted, will be conducted before the newly-created Patent Trial and Appeal Board. In both proceedings, the patentee will have an opportunity to file a response to the petition and is entitled to amend the claims once. 37 C.F.R. §§42.120(a) and 121(a), §§42.220(a) and 221(a). In addition, limited discovery will be available for evidence directly related to factual assertions, including cross-examination of affidavit testimony. 37 C.F.R. §42.51. In both proceedings, the petitioner has the burden of proving unpatentability under a preponderance of the evidence standard (37 C.F.R. §42.1(d)), with the claims given their broadest reasonable construction in light of the specification (37 C.F.R. §42.100(b) and §42.200(b)).
The petitioner in an inter partes review and a post-grant review is estopped from taking any action in the PTO that is inconsistent with a judgment as to grounds the petitioner raised or reasonably could have raised. 37 C.F.R. §42.73(d)(1). This estoppel extends to any district court or ITC proceeding as well. 35 U.S.C. §§315(e)(2) and 325(e)(2). The patent owner whose claim is cancelled will be estopped from taking action inconsistent with an adverse judgment, and that includes obtaining in any patent a claim to substantially the same invention as a finally refused or cancelled claim or a claim that “could have been filed” in response to any properly raised ground of unpatentability for a finally refused or cancelled claim. 37 C.F.R. §42.73(d)(3).
It will be quite interesting to see how closely the final rules track the proposed rules. To be sure, there are some controversial provisions that have generated lots of public comments and are raising questions from practitioners. Will the fees be lowered? Many feel that the proposed costs for filing an inter partes or post-grant review are excessive, even though the PTO went to great lengths to explain and justify the figures. Also, there is public sentiment that questions whether the patentee is unfairly disadvantaged by a number of the rules. For example, should the patentee have to defend claims that are being interpreted under the “broadest reasonable construction” standard, without the benefit of a true examination, particularly where the patentee must prove infringement (in court) with the same claims subjected to a narrower interpretation? And under the estoppel provisions as proposed, should the patentee be prevented from pursuing claims of the same or narrower scope in a continuing application? These questions will be answered soon enough. With the September 16, 2012, effective date only months away, the final rules are expected to be issued over the summer.