By Daniel Yannuzzi

On September 16th, 2012, new rules go into effect for post-grant proceedings for review of United States Patents. Among these are rules for post-grant review of issued patents, inter partes review and transitional post-grant review proceeding for covered business method patents. This article looks at the new requirements for inter partes review.

I. Applicability and Timing

Inter partes review is a new trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a granted United States Patent. Effective September 16th, 2012, inter partes review will be available for all patents regardless of their priority date. This provides an expansion over the applicability of the inter partes reexamination process, which is available only for patents issued from an original application filed in the United States on or after November 29th, 1999.

Petitions requesting the institution of an inter partes review may be filed any time after nine months from the grant of the patent or, in the case of a reissue, nine months from the issuance of the reissue patent. However, if a post-grant review proceeding was instituted on the subject patent and is still pending nine months after the patent is granted, the petition cannot be filed until after the post-grant review is terminated.

However, if you are involved in litigation, additional time limitations may kick in. Therefore, you must be careful not to miss your window of opportunity to file for inter partes review. The new rules provide that you will be estopped from filing a petition for inter parties review if (1) you have already filed a civil action challenging the validity of a claim of the patent; or (2) more than one year has elapsed since you were served with a complaint alleging infringement of the patent. You may also be estopped from filing a petition for inter partes review in cases where there has been a final written decision in a post-grant review, a covered business-method patent review, or inter partes review.

The new inter partes review should move along more quickly than the inter partes reexamination it replaces. The new rules provide a one-year period for administering the proceeding after institution, with up to a six-month extension for good cause. In contrast, there are no statutory time limits placed on inter partes reexamination, which can take several years.

II. Grounds for Review

The grounds for seeking an inter partes review will be limited to issues raised under 35 U.S.C. § 102 or 103 and only on the basis of prior art consisting of patents or printed publications. This is in contrast to the grounds for seeking post-grant review, which include grounds that could be raised under 35 U.S.C. §§ 101, 102, 103 and 112.

If you choose to take advantage of the new inter partes review, your petition should identify the precise relief requested for the claims challenged. The new rules require that your petition set forth each claim being challenged by the petition. For each claim being challenged, your petition must set forth the specific statutory grounds on which the claim is being challenged, how the claim is to be construed, how the construed claim is unpatentable under the identified statutory grounds, exhibits showing any supporting evidence relied upon, the relevance of the evidence to the challenge raised and a citation to the portion of the evidence that is relied upon to support the challenge.

III. Patent-Owner Rights

If your patent is challenged under the new inter partes review procedure, you will now have the ability to file a preliminary response to the petition before the Patent Office makes a determination as to whether to institute the proceeding. This is an added benefit to the patent owner that is not permitted under the current inter partes reexamination proceedings. In this response, the patent owner may set forth reasons why inter partes review should not be instituted based upon the failure of the petition to meet its burden. You should note, however, that the preliminary response must be filed within three months from the date of notice that the request to institute an inter partes review has been granted a filing date.

Because the Patent Office has three months from the filing of the patent owner’s preliminary response (or three months from the date such a response was due) to determine whether to institute the review, the patent owner may wish to file a patent-owner preliminary response well before the due date to expedite the determination. For similar reasons, the patent owner may instead file a paper stating that no patent-owner preliminary response will be filed. Under the rules, no adverse inferences will be drawn where a patent owner does not file a preliminary response.

There are some limitations placed on the patent-owner preliminary response. For example, the patent owner is not allowed to present new testimonial evidence such as expert-witness testimony on patentability. This is in contrast with a patent-owner response submitted after institution of the proceeding, which must present, through affidavits or declarations, any additional factual evidence and expert opinions the patent owner relies on in support of the response. Another limitation on the patent-owner preliminary response is that it cannot include any amendment. However, provisions for filing a motion to amend the patent after an inter partes review are provided in the new rules and are addressed below.

Finally, the patent owner may file a statutory disclaimer disclaiming one or more claims in the patent. In cases where patent claims are disclaimed, no inter partes review will be instituted to review those claims.

IV. Patent-Owner Amendments

The patent owner will be given the right to file one motion to amend the patent, which will be entered provided that it complies with the timing and procedural requirements. The motion to amend must be filed no later than the filing of the patent-owner response, and it must respond to the ground(s) of unpatentability advanced in the proceeding. A motion to amend must also include a claim listing showing the changes being made, and it must set forth support in the original disclosure (or earlier-filed disclosure, as applicable) for each amended or added claim. A motion to amend may be denied where it seeks to enlarge the scope of the claims or introduce new matter.

In the motion to amend, the patent owner may cancel a challenged claim or propose a reasonable number of substitute claims. The reasonable number is presumed to be one substitute claim per challenged claim, but this may be rebutted by a demonstration of need.

Any additional motions to amend will require prior authorization by the Patent Trial and Appeal Board. Authorization may be granted where there is good-cause showing or upon a joint request of the petitioner and the patent owner made to materially advance a settlement. In considering whether good cause is shown, the Board will evaluate how the motion would impact the timely completion of the proceeding and the additional burden it places on the petitioner.

Our Intellectual Property lawyers at Sheppard Mullin have many years of experience effectively utilizing post-grant proceedings before the United States Patent and Trademark Office to further our clients’ objectives. We have used the post-grant proceedings both as a way to avoid costly litigation and as a tool to supplement our litigation strategies.