What Are the Two Sides in Inter Partes Review

Starting on September xvi, 2012, on the first anniversary of the signing of the America Invents Human activity, the Patent Trial and Appeal Board (PTAB) was built-in. The jurisdiction of the PTAB is greatly expanded compared to the previous Lath of Patent Appeals and Interferences (BPAI). About specifically, the PTAB now conducts trials within the patent function. These trials are required by the new procedures ushered in by the AIA, namely Inter Partes Review (IPR), Mail service-Grant Review (PGR) and Covered Business organisation Method (CBM) Review. These three new flavors of patent challenge permit a petitioner to challenge the propriety of 1 or more patent claims one time they have been granted past the Patent Office.

As the chart created by the USPTO beneath shows, Inter Partes Review is gaining in popularity since it commencement became available on September 16, 2012. While Post Grant Review cannot be filed unless the challenge is confronting a patent that issued nether the new first to file rules that went into effect on March 16, 2013, an IPR can be filed to challenge whatsoever patent issued on, before or afterwards September 16, 2012.

When a patent is challenged by an IPR the challenge must be taken very seriously. Patent Office statistics for FY 2013 and FY 2014 through January 31, 2014, show that in that location have been a total of 361 decisions on IPR petitions, with 288 trials instituted. There take been eleven cases that accept been joined and only 62 petitions denied, which corresponds with an 82.8% IPR petition grant rate. Having said this, the IPR grant rate during FY 2013 was 87.2%, while and so far during FY 2014 the IPR grate rate has been 77.2%. This drop in IPR granting rate, while statistically relevant, should not lull patent owners into a imitation sense of security.

What follows is an overview of the rules and laws that use to IPR. For more information please see The PTAB Roadblock to Patent Monetization.

Inter Partes Review Basics

A person who is not the possessor of a patent may file a petition with the Patent Role to institute an Inter Partes Review of an issued patent. The petitioner in an Inter Partes Review may request to abolish equally unpatentable one or more claims of a patent only on a ground that could be raised under 35 U.South.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications. See 35 U.S.C. 331(b). Contrast this with post-grant review, where the grounds that can be raised to challenge a patent also include 35 UsaC. 101 and 112, with the exception of best fashion compliance.

The Patent Trial and Appeal Board (PTAB) will conduct each Inter Partes Review. If an Inter Partes Review is instituted and not dismissed, the Patent Trial and Appeal Lath will result a final written decision with respect to the patentability of whatsoever patent merits challenged by the petitioner and whatever new claim added by the patent owner.

Timing

A petition for Inter Partes Review may be filed after the later of either: (1) The date that is nine months later the grant of a patent or issuance of a reissue of a patent; or (2) if a post-grant review is instituted, the engagement of the termination of that post-grant review. Come across 35 U.Due south.C. 311(c).

Additionally, 35 U.S.C. 315(b) provides that an Inter Partes Review may non be instituted if the petition requesting the proceeding is filed more than 1 year afterwards the date on which the petitioner, real party-in-involvement, or privy of the petitioner is served with a complaint alleging infringement of the patent.

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Requirements of a petition for Inter Partes Review

A petition for Inter Partes Review must satisfy the post-obit weather:

1. The petition must exist accompanied past payment of the fee.
2. The petition must identify all existent parties in interest.
3. The petition must identify, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including:
   1. Copies of patents and printed publications that the petitioner relies upon in support of the petition and
   2. Affidavits or declarations of supporting evidence and opinions, if the petitioner relies on good opinions.
   3. The petition must provide such other information equally the Managing director may crave past regulation.
   4. The petitioner must provide copies of whatsoever of the documents required to the patent possessor or, if applicative, the designated representative of the patent possessor.

After receipt of a petition for Inter Partes Review the Patent Function will make the petition available to the public equally before long as is practicable.

Preliminary response

If an Inter Partes Review petition is filed the patent owner has the right to file a preliminary response to the petition that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to see any requirement.

The preliminary response must be filed no subsequently than three months afterward the date of a detect indicating that the request to institute an Inter Partes Review has been granted a filing date. A patent possessor may expedite the proceeding by filing an election to waive the patent owner preliminary response.

The preliminary response shall not present new testimony evidence beyond that already of record, except equally authorized by the Board.

Establishment of Inter Partes Review

The Role may non authorize an Inter Partes Review to be instituted unless there is a reasonable likelihood that the petitioner would prevail with respect to at least ane of the claims challenged in the petition. The Role will determine whether to plant an Inter Partes Review within three months after: (1) Receiving a preliminary response to the petition; or (two) if no such preliminary response is filed, the terminal date on which such response may be filed.

The decision by the Managing director whether to institute an inter partes review under 35 U.South.C. 314 is terminal and nonappealable. See 35 U.S.C. 314(d).

Automatic stay of civil litigation

35 UsC. 315(a)(ii) provides for an automatic stay of a civil action brought by the petitioner or existent party-in-interest challenging the validity of a claim of the patent and filed on or later on the date on which the petition for Inter Partes Review was filed. However, a counterclaim challenging the validity of a merits of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of 35 The statesC. 315(a).

Estoppel provisions

The petitioner in an Inter Partes Review of a claim in a patent, which results in a concluding written decision, or the real party-in-interest or privy of the petitioner, may non request or maintain a proceeding earlier the Patent Office with respect to that claim on whatever basis that the petitioner raised or reasonably could have raised during that Inter Partes Review. Encounter 35 U.Due south.C. 315(e)(ane). Similarly, there is estoppel confronting an Inter Partes Review petitioner, or the existent party-in-interest or privy of the petitioner, in certain civil deportment and certain other proceedings before the The states International Merchandise Committee (ITC) if that Inter Partes Review results in a final written determination. Run across 35 U.Southward.C. 315(east)(ii).

Amending Claims

A patent owner may as a matter of right file one motion to better the patent. Unless a due appointment is provided in a Board order, a move to amend must be filed no later than the filing of a patent owner response. 37 CFR 42.121(a)(ane). A motion to improve may be denied entry where the subpoena does address an issue raised past the petition or seeks to not enlarge the telescopic of the claims of the patent or introduce new matter. 37 CFR 42.121(a)(2).

The patent owner subpoena may abolish any challenged patent claim or propose a reasonable number of substitute claims. The rebuttable presumption is that but a single substitute claim would be needed to replace each challenged claim. 37 CFR 42.121(a)(iii).

Additional motions to amend may exist permitted upon the articulation request of the petitioner and the patent owner to materially advance the settlement of a proceeding.

Brunt of proof

In an Inter Partes Review the petitioner has the burden of proving unpatentability past a preponderance of the bear witness.

Settlement

An Inter Partes Review volition be terminated with respect to whatever petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. Whatever agreement or understanding between the patent owner and a petitioner, made in connection with, or in contemplation of, the termination of a Inter Partes Review must be in writing, and a true copy of such understanding or agreement will be filed in the Part earlier the termination. If the Inter Partes Review is terminated with respect to a petitioner no estoppel will adhere to that petitioner, or to the real party-in-interest or privy of the petitioner, on the basis of that petitioner'southward institution of that Inter Partes Review. If no petitioner remains in the Inter Partes Review, the Function may terminate the review or keep to a final written conclusion. See 35 U.S.C. 317.

Appeal

A party dissatisfied with the final written decision of the Patent Trial and Appeal Lath may appeal the decision pursuant to 35 U.s.a.C. 141–144. Any party to the Inter Partes Review volition take the correct to be a political party to the appeal. See 35 U.S.C. 319.

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Source: https://www.ipwatchdog.com/2014/02/09/inter-partes-review-overview-and-statistics/id=47894/

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