The Leahy-Smith America Invents Act (AIA), a collection of federal statutes signed into law on September 16, 2011, has significantly impacted the intellectual property landscape. Under the AIA, several administrative post-grant patent trial proceedings were introduced as a means to challenge the patentability of issued U.S. patents, including Inter Partes Review, Post-Grant Review, and Covered Business Method Review.
The AIA was intended to establish an efficient system to improve patent quality and empowers the Patent Trial & Appeal Board (PTAB, formerly the Board of Patent Appeals & Interferences) of the United States Patent and Trademark Office (USPTO) to decide post-grant challenges and review patentability in a speedy and cost-effective manner. The PTAB must decide whether to institute a patent trial proceeding within six months of receiving a petition challenging patentability of one or more claims of a patent. Within twelve to eighteen months from institution of a trial proceeding, the PTAB will provide a final decision on patentability. Notably, the PTAB decisions on patentability are directly appealable to the U.S. Court of Appeals for the Federal Circuit. Due to the potential impact of these proceedings, a multi-disciplined approach is warranted. Brooks Kushman’s post-grant practice group is well-versed in patent litigation, patent prosecution, administrative trial proceedings, appellate practice before the PTAB, patent investigations, and patent searching; and thus is uniquely qualified to utilize these proceedings to challenge or defend patents.
INTER PARTES REVIEW
Inter Partes Review (IPR) is one type of post-grant proceeding available to challenge the claims of U.S. patents. Inter PartesReview is available for all patents during enforceability, regardless of priority date. A petition seeking Inter Partes Review can generally be filed at any time with a couple of exceptions. It must be filed before the petitioner seeks a declaratory judgment of invalidity in a civil action in district court and within one year of service of a complaint for infringement by the patent owner. Also, the PTAB’s decision may be appealed to the U.S. Court of Appeals for the Federal Circuit.
Inter Partes Review differs from Post-Grant Review and other post-grant proceedings in that:
- For first-inventor-to-file patents, the petition for Inter Partes Review cannot be filed while eligible for post-grant review (nine months after the grant of the patent) or during a post-grant review proceeding. For first-to-invent patents, the petition can be filed at any time during a patent’s enforceability.
- The standard of review requires the petitioner to demonstrate a reasonable likelihood of prevailing on at least one patent claim.
- Discovery may be limited to depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in “the interest of justice,” including cited documentation, cross-examination, and information inconsistent with positions advanced during the Inter Partes Review proceeding.
- Grounds for the petitioner’s request to cancel one or more claims of a patent are restricted to prior art consisting of patents or printed publications, which can potentially limit the estoppel effect for the petitioner or patent owner.
INTER PARTES REVIEW PROCESS:
STRATEGY & FORESIGHT
Brooks Kushman understands the intricacies and implications of post-grant challenges, how to staff such matters, what resources to deploy, and the technical issues at the heart of each matter. Our attorneys know what it takes to vigorously represent our clients and prevail in such administrative proceedings and coordinate efforts with possible parallel district court litigation and on appeal, recognizing the impact a decision can have on a patent portfolio, market opportunities, and the bottom line. At the same time, our prosecution team works closely with our clients to develop and implement client-specific strategies to help insulate a patent portfolio from a post-grant challenge. In conjunction with our Patent Searchers, we can track related post-grant proceedings, monitor patent filings from our clients’ competitors, and search for and examine relevant prior art—to anticipate potential future challenges and institute proactive measures to minimize any potential risk. In view of the changing landscape and complex and competing interests at play, Brooks Kushman is able to leverage its depth of experience in all facets of IP, to help our clients maintain competitive advantage.