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Inter Partes Review (IPR) Inter Partes Review (IPR) 1 Agenda o AIA and PTAB o Inter Partes Reexamination o Inter Partes Review (IPR) o Difference between IPR and Inter Partes Reexamination o Procedure o Motions o Estoppels o Who may petition o Time of filing o Fee o Content of petition o Service of petition 2 All content is proprietary and confidential Agenda o Preliminary response to petition o Instituting Inter Partes Review o Patent owner response o Amendment of the patent o Multiple proceedings and Joinder o Filing of supplemental information. o Sanctioning o Estoppels after IPR o Seeking relief o Discoveries o Confidentiality o Statistics 3 All content is proprietary and confidential AIA and PTAB • The Patent Trial and Appeal Board (PTAB) is an administrative law body of the United States Patent and Trademark Office (USPTO) which decides issues of patentability. It was formed on September 16, 2012 as one part of the America Invents Act. • The PTAB deals with IPR, PGR, CBM and Derivation Proceedings 4 All content is proprietary and confidential Inter Partes Reexamination • Prior to September 16, 2012, a party interested in challenging the validity of a patent for want of novelty and non-obviousness could file a request for inter partes reexamination. That request, if granted by the United States Patent and Trademark Office (USPTO), provided the party with a voice during subsequent review of the patent by the USPTO. Many parties used inter partes reexamination when confronted with a lawsuit for patent infringement to provide for two potential bites at the apple; one through the courts and a second through the USPTO. 5 All content is proprietary and confidential Inter Partes Review (IPR) • Inter partes reexamination is no longer available (last day, Sept. 15, 2012) at the USPTO. Instead, a challenger may now seek inter partes review (IPR), which is applicable to all issued patents. IPR may be requested any time that is nine months after the patent has issued or after post grant review (PGR). The process must be concluded by the USPTO within eighteen months from the institution of the review (it should be concluded in a year or less, but the USPTO may extend this deadline up to eighteen months for discretionary reasons). 6 All content is proprietary and confidential Difference between IPR and Inter Partes Reexamination • Similar to inter partes reexamination, IPR only involves determinations of novelty and non-obviousness of a patent in light of prior patents, published patent applications and other printed publications. This leaves out patent invalidity due to a prior commercial sale, prior public use, and other reasons. • Unlike inter partes reexamination, IPR is conducted in front of three administrative law judges instead of a single patent examiner. These three administrative law judges are members of the Patent Trial and Appeal Board (PTAB), which replaced the old Board of Patent Appeals and Interferences (BPAI) within the USPTO. In the old system of inter partes reexamination, an appeal of an adverse decision by a patent examiner was handled by the BPAI, followed by an appeal to a federal court (usually to the Court of Appeals for the Federal Circuit). Consequently, IPR streamlines the patent review process for any appeal of an adverse decision directly to the federal court system. The published rules governing IPR provide for discovery and filing of motions with the PTAB on various matters - something absent during inter partes reexamination. 7 All content is proprietary and confidential Procedure 8 All content is proprietary and confidential Estoppels • IPR also carries with it certain estoppel provisions. For example, if the party challenging the patent loses its bid to have a claim cancelled, then that party is barred from seeking review of that claim before the USPTO at any later time using the same evidence or evidence that the party should have known about. Likewise, if the party challenging the patent loses its bid to have a claim cancelled, then that party is barred from seeking review of that claim by a court at any later time using the same evidence or evidence that the party should have known about. But a party may continue to challenge the patent for want of novelty and non-obviousness based upon a commercial sale, a public use, for example. 9 All content is proprietary and confidential Who may petition • A person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent unless: • (a) Before the date on which the petition for review is filed, the petitioner or real party- in-interest filed a civil action challenging the validity of a claim of the patent; • (b) The petition requesting the proceeding is filed more than one year after the date on which the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent; or • (c) The petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition. 10 All content is proprietary and confidential Time of filing • (a) A petition for inter partes review of a patent must be filed after the later of the following dates, where applicable: • (1) If the patent is a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act, the date that is nine months after the date of the grant of the patent; • (2) If a post-grant review is instituted as set forth in subpart C of this part, the date of the termination of such post-grant review. • (b) The Director may impose a limit on the number of inter partes reviews that may be instituted during each of the first four one-year periods in which the amendment made to chapter 31 of title 35, United States Code, is in effect by providing notice in the Office's Official Gazette or Federal Register. Petitions filed after an established limit has been reached will be deemed untimely. 11 All content is proprietary and confidential Fee • The AIA requires the Director to set the fee for a post grant review in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review. For petitions filed prior to March 19, 2013, the fee for filing a petition challenging the patentability of up to 20 claims is $27,200. For each additional claim challenged, there is a fee of $600.00. For petitions filed on or after March 19, 2013, the request fee is $9,000 plus a fee of $200.00 for each claim over 20, and the post-institution fee is $14,000 plus a fee of $400.00 for each claim over 15. 12 All content is proprietary and confidential Content of petition • Grounds for standing. The petitioner must certify that the patent for which review is sought is available for inter partes review and that the petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in the petition. • Identification of challenge. Provide a statement of the precise relief requested for each claim challenged • The claim • The specific statutory grounds under 35 U.S.C. 102 or 103 on which the challenge to the claim is based and the patents or printed publications relied upon for each ground 13 All content is proprietary and confidential Content of petition • How the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f) • How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon • The exhibit number of the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge • A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition. 14 All content is proprietary and confidential Service of petition • a) The petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent. The petitioner may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service. • (b) Upon agreement of the parties, service may be made electronically. Service may be by Priority Mail Express® or by means at least as fast and reliable as Priority Mail Express®. 15 All content is proprietary and confidential Preliminary response to petition • (a) The patent owner may file a preliminary response to the petition. The response is limited to setting forth the reasons why no inter partes review should be instituted under 35 U.S.C. 314 and can include supporting evidence. The preliminary response is subject to the word count under §42.24. • (b) Due date. The preliminary response must be filed no later than three months after the date of a notice indicating that the request to institute an inter partes review has been granted a filing date. A patent owner may expedite the proceeding by filing an election to waive the patent owner preliminary response. • (d) No amendment. The preliminary response shall not include any amendment.
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