New Options for Challenging Patents at the U.S.P.T.O. Under the America Invents Act

The Leahy-Smith America Invents Act creates new procedures for challenging patents at the PTO, including Post Grant Review and Inter Partes Review.

Post-Grant Review

In a new Post Grant Review proceeding, a petitioner may challenge a patent on any requirement for patentability by filing a petition for review within nine months of either

  1. the patent grant or
  2. the issuance of a broadening reissue patent.

This section of the Act goes into effect one year from the date of enactment but may only be asserted against patents issued 18 months from enactment.

A petitioner must show that it is more likely than not that at least one of the claims challenged in the petition is unpatentable, or that the petition raises a novel or unsettled legal question "that is important to other patents or patent applications." It is unclear whether issues such as claim construction would be viewed as unsettled legal questions, although the PTO regulations implementing this law may bring some clarity to this issue over the next year.

A Post Grant Review decision from the PTO is due no later than a year and a half after the institution of the Review. In light of this, the Act requires the PTO to draft regulations that limit discovery "to evidence directly related to factual assertions advanced by either party in the proceeding." A petitioner bears the burden of proving unpatentability by preponderance of the evidence. Thus, unlike a litigant in district court, a petitioner does not have to overcome the presumption of validity by clear and convincing evidence.

Finally, a Post Grant Review proceeding will have estoppel effect for a challenged claim. Specifically, with respect to a claim that is subject to a final written decision, a petitioner cannot later raise any ground for invalidity that the petitioner raised or could have raised with respect to that claim. This estoppel will apply before the PTO, a District Court, or the ITC.

Inter Partes Review

Patents may also be challenged under an Inter Partes Review procedure, although the scope of the challenge is limited to patents or printed publications. Under this procedure, a petition is timely if it is filed after the nine month period for requesting Post Grant Review has expired or after any Post Grant Review is terminated. Although, if a party is sued for infringement, it must initiate an Inter Partes Review within one year.

An Inter Partes Review proceeding will have the same estoppel effects, decision due date, and evidentiary burden as a Post Grant Review. This time constraint will be tested by the somewhat more open-ended discovery process. Specifically, the Act limits discovery to "the deposition of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice" (emphasis added). As such, if the interests of justice necessitate extensive discovery, an Inter Partes Review proceeding may be quite burdensome on both the PTO and the parties.

The provisions of the Act related to Inter Partes Review come into effect one year from the date of enactment and, unlike Post Grant Review, are applicable to any patent issued on or after that effective date.

Neither form of review may be filed if a petitioner has already filed a declaratory judgment action "challenging the validity of a claim of the patent." However, a counterclaim of invalidity does not raise the same bar. While a petitioner may file a declaratory judgment action on or after petitioning for one of these reviews, the action will be "automatically stayed" until the patent owner either (1) moves to lift the stay or (2) alleges that the petitioner infringes the patent.

These new procedures go into effect on September 16, 2012; however, the Post Grant Review may only be applied to patents that issue on March 16, 2013 or later. We note that many commentators, including the PTO, have overlooked this limitation on Post Grant Review.