First, the AIA revised the prior Inter Partes Review practice discussed in an earlier blog.
This blog pertains only to the new practice (post AIA). You may also want to review my blog “Challenges to your Patent”
Inter Partes Review can only be initiated after 9 months for the patent grant. This is consistent with the 9 month window allowed for filing a petition for Post Grant Review.
Further Inter Partes Review has a more limited focus that the Post Grant Review. Inter Partes Review is limited to issues that could be raised under Sections 102 (novelty) or 103 (obviousness) of 35 U.S.C. See also my blog post “Requirements for a Patentable Invention”.
Inter Partes Review is initiated by filing a petition. The petition, with consideration of any response filed by the party owning the patent (patentee), must show that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged by the petition. (Note that this may be a lower standard than the pre-AIA standard of “substantial new question of patentability”.)
Contents of Petition
The petition must identify the grounds of the petition, i.e., the prior art which pertains to each challenged claim and the basis for lack of novelty or the existence of obviousness. The petition must identify the patent(s) or printed publications which are the basis of claim invalidity. In addition, the petition must identify where each element of the challenged claim is disclosed in the prior art reference.
The Inter Partes Review process, like Post Grant Review, is intended to proceed quickly with a final decision issued within 12 months of the granting of the petition. (It is possible for a 6 month extension.)
Inter Partes Review is conducted by a three member panel of administrative law judges of the Patent Trial and Appeal Board (PTAB). Note that, like the prior practice, raising an issue of patent validity via the petition process maybar the petitioner from later raising the same issue in defense of an infringement proceeding. See 35 U.S.C. Section 315(e)(2) of the AIA. This possibility of being “estopped” or barred from raising the issue in defense of a patent infringement claim has been an impediment to utilizing the Inter Partes Review procedure. This is in spite of the lower cost of the procedure relative to facing patent infringement litigation.
From a strategy perspective, if you are faced with the award of patent to a competitor, you can consider either Post Grant Review (9 month window) or Inter Partes Review. If the competitor asserts the new patent against you, you can alternatively file an action in federal court for declaratory judgement, i.e., seeking a judge to invalidate the patent. The default is to do nothing, and anticipate a possible infringement action being filed against you.
Copyright David McEwing, 2019