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AMERICA INVENTS ACT - Inter Partes Review

October 29, 2012

Oct. 29, 2012

This is the eighth article in a series of 10 relating to the Leahy-Smith America Invents Act of 2011 (AIA). This article discusses the new procedure under 35 U.S.C. 311 through 35 U.S.C. 319 " Inter Partes Review," effective Sept. 16, 2012, and applies to any patent issued before, on, or after Sept. 16, 2012. Other issues raised by the AIA are addressed in other articles in this series.

Previously, a third party could request reconsideration of the patentability of a patent via an inter partes or an ex parte reexamination. In the reexamination, the requestor submits patents and/or printed publications that created a substantial new question of patentability (SNQP). The new inter partes review replaces inter partes reexamination. Ex parte reexaminations can still be requested.

Inter partes review is conducted at the Patent Trial and Appeal Board to review the patentability of a patent under 35 U.S.C. 102 (novelty) or 35 U.S.C. 103 (obviousness) and, like a reexamination, can only be supported by prior art consisting of patents or printed publications.

To institute the review, a third party petitioner (not the patent owner) files a Petition with the Board. The petitioner cannot have previously filed a civil action challenging the validity of the patent. The Petition cannot be filed until after the later of either: (1) nine months after the issuance of the patent or reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. This is a significant difference from inter partes reexamination, which can be instituted at any time during the period of enforceability of a patent . Post grant review is covered in another article in this series.

If two or more inter partes reviews on the same patent are filed, the Board can stay or terminate one of the reviews, or transfer or consolidate the reviews. Joinder may be requested by either party.

The Petition must (i) identify all real parties in interest; (ii) identify all claims challenged and all grounds on which the challenge to each claim is based; (iii) provide copies of evidence relied upon; (iv) identify the grounds for standing; (v) provide a claim construction for each challenged claim; (vii) specifically explain the grounds for unpatentability; and (viii) specifically explain the relevance of evidence relied upon. The filing cost is $27,200 to challenge the patentability of up to 20 claims, and $600 for each additional challenged claim.

The Petition will be granted if "the information presented in the request shows that there is a reasonable likelihood that the requestor would prevail with respect to at least 1 of the claims challenged in the request".  This is a different standard than the SNQP of the prior inter partes reexamination. The Board decides the Petition and conducts any further reviews.

The patent owner may file a preliminary response within three months to provide reasons why the review should not be instituted. In this response, the patent owner may challenge the standing of the petitioner.

If the Petition is not granted, rehearing with the Board can be requested. The rehearing request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed. The decision whether to institute the review cannot be appealed.

If the review is instituted, the patent owner may file one motion, which cancels any challenged patent claim and/or proposes a reasonable number of substitute claims.  The schedule for response is set by the Board, however, the patent owner will usually have three months to file a response.

The review is heard by a tribunal of administrative patent judges rather than being considered by a patent examiner. The petitioner can file additional information, upon motion, within one month of the date trial is instituted. Information submitted thereafter will only be permitted upon a showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.

The file is open to the public. A party may seek to seal confidential information by motion. Protective orders may be used to govern the exchange and submission of confidential information.

During the review, discovery is permitted in the form of depositions of witnesses, submitting affidavits or declarations and what is otherwise necessary in the interest of justice. Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. Either party may request an oral hearing. Sanctions are available for abuse of discovery, abuse of process, or any other improper use of the review.

A final written decision on the patentability of the claims will be made by the Board within one year. This is extendable for good cause by six months. Either party can request rehearing of the final decision. All matters believed to be misapprehended or overlooked and the place where each matter was addressed in the Petition must be specifically identified in the rehearing request. After the Board renders its final decision, the petitioner cannot request a subsequent proceeding before the Patent Office on any ground that reasonably could have been raised in the review, and cannot assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the review. The patent owner is estopped from taking action inconsistent with any adverse judgment in the written decision.

Either party can appeal the written decision to the Federal Circuit. The parties can settle the matter which terminates the proceeding with respect to the petitioner. The Board may terminate the proceeding or issue a final written decision.

For more detailed information about the AIA or any other intellectual property matter, please contact Linda L. Palomar, , or any member of Clark Hill's IP practice group.

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