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IP: How the AIA has affected post-grant review

Part one of a guide to approaching the new patent system

The changes implemented by the America Invents Act (AIA) have made it so that the patent system needs to be approached in an entirely new way. Patent practitioners need to have a detailed understanding of how the AIA affects litigation, prosecution and post-grant proceedings. This article, which is the first of a three-part series, discusses the AIA’s effects on post-grant review. The two subsequent articles will discuss how the AIA has affected litigation and patent prosecution.

 

Post-Grant Review

The area of patent practice arguably most affected by the AIA is in the area of post-grant review. The Patent Trial and Appeal Board (PTAB), formerly called the Board of Patent Appeals and Interferences, was established by the AIA to review ex parte re-examination appeals and to conduct inter partes reviews and post-grant reviews.

The AIA left ex parte reexamination effectively unchanged. Inter partes re-examination, though, was eliminated on Sept. 16, 2012 and replaced with inter partes review. An inter partes review can be instituted any time nine months after the issuance of a patent or, if a post-grant review has been initiated, the date of termination of such post-grant review. However, if you have been sued for patent infringement, you must file an inter partes review within one year of being served the complaint. You can request inter partes review based on prior art consisting of patents or printed publications. The threshold standard for initiating an inter partes review is “reasonable likelihood to prevail,” which is stronger than the previous “substantial new question of patentability” standard.

The AIA permits inter partes review on all patents that have issued, eliminating the 1999 filing date limit of inter partes reexaminations. The evidentiary standard for inter partes review is preponderance of the evidence, which is lower than in district courts.

The AIA provides for another administrative opposition proceeding, called post-grant review, that allows a third party to challenge a patent on any ground related to invalidity under 35 U.S.C. § 282 during the first nine months after the granting of the patent or reissue patent. Post-grant review is only available for patents that have an effective filing date after March 16, 2013. The standard a petitioner must meet to successfully initiate a post-grant review is that “one challenged claim is more likely than not to be deemed unpatentable.”

Both inter partes review and post-grant review are conducted in a streamlined process intended to reach resolution within 12 months, allowing for a much quicker resolution than could be reached in federal court litigation. Similar to litigation, discovery is allowed.

The general procedures for post-grant/inter partes review practice resemble the following:

  • After a decision granting either a post-grant review or inter partes review is made, the patent owner can file a response and a motion to amend claims within four months
  • Thereafter, a petitioner can file a reply to the response and an opposition to any amendments within two months
  • Next, the patent owner can file a reply to any opposition to the amendments within one month
  • After these procedures have concluded, a trial takes place before the PTAB. Similar to litigation, before the trial, parties are allowed to file various motions, including motions to exclude evidence.

Both post-grant review and inter partes review will have a significant effect on litigation practice. Besides the estoppel issues raised above, post-grant review/inter partes review will be a much less expensive alternative to patent litigation in federal courts. Discovery will be less voluminous and less burdensome as well. Litigation proceedings that are initiated alongside post-grant review or inter partes review proceedings will also have an increased chance of obtaining a stay of the litigation because of the 12-month timeframes for the review proceedings.

In the next article in our three-part series, we will describe the effect the AIA has had on patent litigation.

Contributing Author

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Wes Klimczak

Wes Klimczak is a patent attorney in the Silicon Valley office of Novak Druce Connolly Bove + Quigg LLP. His practice focuses on trademark and...

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