Post-Grant & Inter Partes Review Procedures

Presented to AIPPI, Italy

February 10, 2012

By

Joerg-Uwe Szipl

Griffin & Szipl, P.C.

Post-Grant Review

What is it? A “request to cancel as unpatentable one or more claims

of a patent.” Section 321(b).

What does it do? Allows a patent to be challenged on essentially any

grounds under 35 USC 102 and all grounds under 35 USC 112, except best mode

Final rules to be provided by September 16, 2012

Post-Grant Review

When Can You File? No later than 9 months after the grant or reissue of a

patent. Section 321(c). Implementation

Applies to Applications filed on or after March 16, 2013 Excludes Applications with a priority date before March

16, 2013 Only if all the claims are entitled to the earlier filing date If any claims are not entitled to the earlier filing date, then Post-

Grant Review applies to all the claims

Standard for Post-Grant Review

All post-grant reviews will be conducted by the Patent Trial and Appeal Board (PTAB). Section 326(c); Section 6(b)(4).

Two ways to meet threshold Show “reasonable likelihood the petitioner would prevail

with respect to at least one” of the challenged claims. Section 324(a).

Show that the petition “raises a novel or unsettled legal question.” Section 324(b).

Post-Grant Review in Relation to Other Actions

Post-grant review is barred by civil actions challenging the validity of a claim of the patent. Section 325(a)(1).

If petitioner or real party in interest files a civil action on or after the filing date of a post-grant review petition, the civil action is automatically stayed. Section 325(a)(2).

A counter-claim challenging the validity of a patent does not constitute a civil action for the purposes of this section. Section 325(a)(3).

The court cannot stay its consideration of a patent owner’s motion for preliminary injunction against infringement of the patent on the basis that a post-grant review has been filed or instituted if the action alleging infringement is filed within 3 months of the date of grant. Section 325(b).

Petitioner is stopped from requesting or maintaining a civil action or a proceeding before the Office or the ITC with respect to any ground that the petition raised or reasonably could have raised during post-grant review. Section 325(e).

A post-grant review may not be instituted if the petition requests cancelation of a claim in a reissue patent that is identical to or narrower than a claim in the original patent if the time limitations would bar filing a petition for that original patent. Section 325(f).

Out with Inter Partes Reexamination . . .

AIA Section 6(c)(3): Inter Partes Reexamination to be replaced by Inter Partes Review

Transition Period: September 16, 2011 – September 16, 2012

AIA Section 6(c)(3)(A): new rules for Inter Partes Reexamination during transition period Old Standard: Substantial New Question (SNQ) New Standard: Reasonable Likelihood

And In With Inter Partes Review

Section 311 Implementation Date: September 16, 2012

Requests for Inter Partes Reexamination filed on or after September 16, 2012 will not be granted

Inter Partes Review

What is it? A “request to cancel as unpatentable one or more claims

of a patent.” Section 311(b). Pretty similar to inter partes reexamination

What does it do? Allows a patent to be challenged on any “ground that

could be raised under section 102 or 103” that are based on printed publications or patents. Section 311(b).

Inter Partes Review

When can you file? Any date more than 9 months after the grant or

reissue of a patent. Section 311(c)(1). Unless there is a Post Grant Review, then any

date after the end of the Post Grant Review. Section 311(c)(2).

Standard for Inter Partes Review

All inter partes reviews will be conducted by the Patent Trial and Appeal Board (PTAB). Section 316(c); Section 6(b)(4).

New, stricter standard: “reasonable likelihood the petitioner would prevail with respect to at least one” of the challenged claims. Section 314(a).

"The threshold for initiating an inter partes review is elevated from 'significant new question of patentability' -- a standard that currently allows 95% of all requests to be granted -- to a standard requiring petitioners to present information showing that their challenge has a reasonable likelihood of success." H.R. Rep. No. 112-98 (Part 1), at 47.

Inter Partes Review in Relation to Other Actions

Inter partes review is barred by civil actions challenging the validity of a claim of the patent. Section 315(a)(1).

If petitioner or real party in interest files a civil action on or after the filing date of an inter partes review petition, the civil action is automatically stayed. Section 315(a)(2).

A counter-claim challenging the validity of a claim does not constitute a civil action for the purposes of this section. Section 315(a)(3).

Inter partes review is barred if the petition is filed more than 1 year after the date a complaint alleging infringement is served. Section 315(b).

Estopped from requesting or maintaining a civil action or a proceeding before the Office or the ITC with respect to any ground that the petition raised or reasonably could have raised during inter partes review. Section 315(e).

Requirements for Inter Partes and Post-Grant Review

Petition Requirements: Sections 312(a) & 322(a) Payment of the fee Identification of all real parties in interest Identification, “in writing and with particularity,” of each

challenged claim, the grounds on which each challenge is based, and the evidence supporting each grounds of challenge, including copies of:

Patents and printed publications Affidavits or declarations of supporting evidence Anything else the Director decides to require by regulation

Publication Requirements: Sections 312(b) & 322(b) “As soon as practicable” after receipt of petition by USPTO

Requirements for Inter Partes and Post-Grant Review

Requirements to Show Reasonable Likelihood: 37 C.F.R. 1.195 A citation of all the art presented A statement pointing out each showing of a reasonable

likelihood that the requester will prevail with respect to at least one of the claims challenged in the request

A detailed explanation of the pertinency and manner of applying the patents and printed publications to every challenged claim

Requirements for Inter Partes and Post-Grant Review

Patent Owner’s Preliminary Response Requirements: Sections 313 & 323

Explanation as to why no post-grant review should be instituted “based upon the failure of the petition to meet any requirement” of chapter 31

Final Determination Deadline: Sections 316(a)(10) & 326(a)(10).

A final determination must be issued no later than one year after the Director gives notice of the institution of an inter partes or post-grant review

Director may, for good cause, extend this deadline by not more than 6 months, or as necessary in case of joinder

Amendments and Burden of Proof for Inter Partes and Post-Grant Review

During inter partes or post-grant review, the patent owner may file one motion to amend the patent in one or more of the following ways. Sections 316(d)(1) & 326(d)(1). Cancel any challenged patent claim Propose a reasonable number of substitute claims for any

challenged claim The Petition has the burden of proving

unpatentability by a preponderance of evidence. Sections 316(e) & 326(e).

Patent Trial and Appeal Board

Witnesses who have submitted affidavits or declarations can be deposed

Parties can request discovery Both Parties have a right to present an oral argument before the

PTAB A panel of three “administrative patent judges” will conduct all

inter partes and post-grant reviews Decisions by PTAB can only be appealed to the Fed. Cir.

Section 141(c). Questions of fact are reviewed on a “substantial evidence” standard –

NOT de novo Questions of law are still reviewed de novo

Ex Parte Reexamination

Standard Under 35 U.S.C. 303(a): Still Substantial New Question A SNQ is present if a reasonable Examiner would

consider the teaching of the prior art important in determining patentability and the same question of patentability has not already been decided

Prima facie case of unpatentability not necessary for a SNQ to be present

AIA abolishes trial de novo after a Board decision Retroactive - applies to all cases pending on September

16, 2011

Ex Parte Reexamination

Requirements under 37 CFR 1.510: “a statement pointing out each SNQ based on prior patents and printed publications” Must point out how the SNQ(s) are substantially

different from those raised in the first examination Must demonstrate that the art relied on for the proposed

rejection presents a new, non-cumulative technological teaching that was not previously considered

May be based on “old art” if presented in a new light or a different way not previously considered