Post-Grant Review and Inter Partes Review

By Chad M. Rink

The America Invents Act (AIA) sets forth new post-grant review proceedings. The new laws associated with post-grant review (PGR) and Inter Partes Review (IPR) will go into effect on September 16, 2012. IPR will apply to all patents issued before, on, or after this date, but inter partes reexamination under the pre-AIA law will continue if the request was filed prior to September 16, 2012. With the exception of business method patents and pending interferences, PGR will only apply to patents that contain a claim that has an effective filing date that is on or after March 16, 2013. Regarding pending interferences, the interferences may be dismissed without prejudice by the filing of a PGR petition. In addition, the Director may impose a limit on the number of IPRs and PGRs that may be instituted during the first four years following September 16, 2012.

Under the post-grant review proceedings prior to the AIA, inter partes and ex parte reexaminations were reviewed by the examining corps of Central Reexamination Unit of the USPTO. Any party dissatisfied with the Examiner’s decisions could then appeal to the Board of Patent Appeals and Interferences.

With the new post-grant review proceedings, PGR and IPR are decided by the newly formed Patent Trial and Appeal Board (PTAB).  As such, the new post-grant review proceedings eliminate the review by the USPTO examining corps.

Post-Grant Review vs. Inter Partes Review

The table below summarizes the differences and similarities between PGR and IPR.

As noted in the table, both PGR and IPR have statutory deadlines for completion.  The proceedings must end one year after institution, but this one-year period may be extended for another six months if good cause is shown.  It is not clear what penalty, if any, exists if the USPTO does not complete the PGR or IPR within this time frame. Any appeals of a PGR or IPR decision proceed directly to the Federal Circuit.

Although the estoppel provisions for both PGR and IPR are based on grounds raised or reasonably could have been raised, PGR presents harsher estoppel provisions than IPR since “grounds that reasonably could have been raised” is much broader in PGR.  Specifically, PGR is for any ground related to patent invalidity under 35 U.S.C. § 282, but IPR is for a ground related to patent invalidity under 35 U.S.C. §§ 102 and 103 and on the basis of patents or printed publications.

PGR and IPR will be discussed in more depth below.

Post-Grant Review

PGR may be requested based on any ground related to patent invalidity under 35 U.S.C. § 282 (except for failure to comply with the best mode requirement), which includes challenges under 35 U.S.C. §§ 101 and 112.  PGR must be requested within nine months of the issue date of the patent.

The petition for PGR must identify all real parties in interest.  The petition must also identify each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.  Such evidence may include patents, printed publications, affidavits, and declarations.  However, evidence for PGR is not limited to these examples.

After the petition is filed, the patent owner may file a preliminary response that sets forth reasons why no PGR should be instituted.  The Director will then determine whether to institute a PGR within three months after the preliminary response is received or the last date on which the preliminary response may be filed if no preliminary response is received.  The threshold for determining whether to institute a PGR is “more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”  According to legislative history, this threshold standard for instituting PGR is meant to be slightly higher than the IPR threshold standard of a “reasonable likelihood” the petitioner would prevail that at least one claim is unpatentable.  The PGR threshold may also be met by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.  The Director’s determination as to whether to institute a PGR cannot be appealed.

PGR may be affected by other proceedings.  For example, PGR may not be instituted if a petition is filed after the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.  In contrast, if the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent on or after the petition for PGR is filed, then the civil action will be automatically stayed.  A counterclaim of invalidity does not qualify as a civil action challenging validity.  The stay will be lifted if the patent owner moves to lift the stay, the patent owner files an action or counterclaim for infringement, or if the petitioner moves to dismiss the civil action.  Thus, the petitioner may essentially have “one bite at the apple” whether in litigation or before the USPTO.

Under the AIA, estoppel for PGR becomes effective with a written PTAB decision with respect to any ground that the petitioner raised or reasonably could have raised.  However, settlement agreements are allowed, which create no estoppel.

PGR does allow for discovery.  The discovery is limited to evidence directly related to factual assertions advanced by either party in the proceeding.

In PGR, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.  As such, the petitioner has a lower burden of proof than litigation, which requires proving invalidity by the clear and convincing evidence standard.

Inter Partes Review

Inter partes reexamination prior to the AIA is limited to applications filed on or after November 29, 1999.  However, IPR applies to all patents with no date restrictions.

IPR may be requested based on a ground that could be raised under 35 U.S.C. §§ 102 and 103 and only on the basis of prior art consisting of patents or printed publications.  Therefore, as with the system of inter partes reexamination prior to the AIA, IPR is limited to patents and printed publications.  A petition for IPR must be filed after the later of either nine months after the issue date of the patent or the date of the termination of the PGR if a PGR is instituted.

Like PGR, the petition for IPR must identify all real parties in interest.  The petition must also, like PGR, identify each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.  Such evidence may include patents, printed publications, affidavits, and declarations.

After the petition is filed, the patent owner may file a preliminary response that sets forth reasons why no IPR should be instituted.  Like PGR, the Director will then determine whether to institute an IPR within three months after the preliminary response is received or the last date on which the preliminary response may be filed if no preliminary response is received.  The threshold for determining whether to institute an IPR is “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”  The Director’s determination as to whether to institute an IPR cannot be appealed.

As with PGR, IPR may be affected by other proceedings.  Specifically, IPR may not be instituted if a petition is filed after the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.  In contrast, if the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent on or after the petition for IPR is filed, then the civil action will be automatically stayed.  A counterclaim of invalidity does not qualify as a civil action challenging validity.  The stay will be lifted under the same circumstances as PGR.

Under the AIA, estoppel for IPR becomes effective with a written PTAB decision with respect to any ground that the petitioner raised or reasonably could have raised.  Thus, estoppel is in effect much more quickly than inter partes reexamination, which requires a final decision (e.g., all appeals exhausted).  However, settlement agreements are allowed, which create no estoppel.

IPR allows for potentially broader discovery than PGR.  In IPR, the discovery is limited to the deposition of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice.

In IPR, like PGR, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.  As such, the petitioner has a lower burden of proof than litigation.

Conclusion

Both PGR and IPR present new ways to challenge an issued patent.  When considering whether to file a petition for PGR or IPR, the petitioner should consider the timing to file the petition, the threshold requirements, the available grounds to assert invalidity, and discovery options.  These two post-grant review proceedings provide advantages over litigation in terms of lower burden of proof while theoretically having lower costs and faster results.