Lectures & Articles

Inter Partes Review

In accordance with the Leahy-Smith America Invents Act (AIA),¹ inter partes review will replace inter partes reexamination starting on September 16, 2012. Effective on September 16, 2011, however, the threshold standard for granting inter partes reexamination changed from a “substantial new question of patentability” (SNQ) to “reasonable likelihood that the petitioner will prevail” with respect to at least 1 of the patent claims.  This same threshold standard of “reasonable likelihood that the petitioner will prevail” will also be used in inter partes review.

In accordance with §§ 311-319 of the AIA, a third party will be able to request an inter partes review (IPR) of an issued patent on or after 9 months following issuance (but later of a patent issuance or termination of any PGR).  Unlike PGR where any ground of rejection can be a basis, only prior art can be used to institute IPR. Like PGR, the third party requester must identify all real parties in interest.  Also like PGR, an IPR cannot be instituted if there is a prior civil suit challenging validity of the same patent.  But if an IPR is instituted, a later or same day filed civil suit would be automatically stayed (with exceptions as identified in § 325).  Further, in contrast to inter partes reexamination, any patent is subject to IPR starting on September 16, 2012.  Finally, like PGR, estoppel for IPR applies with issuance of the PTAB decision, wherein the third party requester or its privies cannot participate in any USPTO proceeding or file any court action against the patent which asserts that a claim in the patent is invalid “on any ground that the petitioner raised or reasonably could have raised” during the initial IPR.

Regarding procedures and upcoming rules on inter partes review, as stated by the USPTO:

Inter partes review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1)9months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting inter partes review will take effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.

Additional information is forthcoming.

1. Now Public Law 112-29 (Sept. 16, 2011).