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 proceedings for covered business-method patents. This article looks at the new requirements for post-grant review.
I. Applicability and Grounds for Review
Post grant review is a new trial proceeding that will be conducted by the Patent Office’s Patent Trial and Appeal Board (the “Board”) to review the patentability of one or more claims in a granted U.S. Patent. With limited exceptions, post-grant review will be available only on those patents issuing from applications subject to first-inventor-to-file provisions of the America Invents Act (the “AIA”). Because the first-inventor-to-file provision of the AIA is not effective until March 16th, 2013, the post-grant review provisions will apply to patents issued from applications that have an effective filing date on or after March 16th, 2013.
The grounds for seeking post-grant review include any ground that could be raised under 35 U.S.C. § 282(b)(2) or (3). These include grounds that could be raised under 35 U.S.C. §§ 101, 102, 103 and 112, with the exception of compliance with the best mode requirement. Accordingly, post-grant review may be sought in a broader range of circumstances than inter partes review, which is limited to issues raised under 35 U.S.C. § 102 or 103 on the basis of prior art consisting of patents or printed publications. Alternatively, a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications may be sufficient grounds to institute review.
If you wish to file a petition for post-grant review, you must do so no later than nine months after the grant date of the patent or, in the case of a reissue patent, no later than nine months after the issuance thereof. However, in the case of reissue patents, if the petition covers a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent issued, the timing is based on the grant date of the original patent.
You may need to act quickly where litigation is involved, however, because you will not be permitted to file a petition for post-grant review of a patent if you have already filed a civil action challenging the validity of a claim in that patent. Note that filing a counterclaim challenging the validity of a claim of a patent does not constitute filing a civil action challenging the validity of a claim under these new rules.
What if you are the patent owner and someone has filed a petition for post-grant review of your patent? As the patent owner, you may choose to file a preliminary response to the petition setting forth the reasons why post-grant review should not be instituted. Your preliminary response must be filed no later than three months from the date of the notice that the request to institute a post-grant review has been granted a filing date. Although you may not file an amendment with your preliminary response, you may file a statutory disclaimer, disclaiming one or more claims in the patent. Post-grant review will not be instituted on disclaimed claims.
Once the petition and a preliminary response (if any) are filed, the Board will consider the petition and ultimately issue a decision on whether to institute a post-grant review. The Board’s decision will be issued within three months of: (1) Receiving a preliminary patent-owner response to the petition; or (2) if no preliminary response is filed, the last date on which such response may be filed.
The final determination in any post-grant review will normally be issued no later than one year after the proceeding is instituted. This period may be extended by up to six months for good cause by the Chief Administrative Patent Judge. It may also be adjusted by the Board in the case of joinder.
III. Requirements of the Petition
Any person who is not the owner of the patent in question may file a petition with the Patent Office to institute a post-grant review of that patent. If you file a petition, you must certify that the patent for which you seek review is eligible for post-grant review and that you are not barred or estopped from requesting the post-grant review on the grounds identified in the petition.
Your petition must include a statement of the precise relief requested for each claim challenged. The statement must identify each claim challenged, and for each claim: (1) the grounds on which the challenge is based; (2) how the challenged claim is to be construed; and (3) how the construed claim is unpatentable under the statutory grounds identified in the petition.
Where your challenge is based on prior art, your petition must specify where each element of the claim is found in the prior art. Where your challenge is based on other statutory grounds of unpatentability, your petition must both identify the specific part of the claim that is challenged under the statute and state how the identified subject matter fails to comply with the statute. You should also include exhibit numbers of the evidence relied on in your challenge, with a citation to specific portions of the evidence that support your challenge.
The standard for instituting review is that the petition would, if unrebutted, demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Board’s decision will take into account a patent-owner preliminary response where such a response is filed. The petitioner will have the burden of proving unpatentability by a preponderance of the evidence, and the claims under consideration will be given their broadest reasonable construction in light of the patent specification.
IV. Patent-Owner Rights
If you are the patent owner and a petition has been filed for post-grant review of one of your patents, you have the right to participate in the process. First, as the patent owner, you have the right to file a preliminary response to the petition that sets forth the reasons why post-grant review should not be instituted. Unless provided otherwise by the Patent Office, the due date for this preliminary response is three months from the date the post-grant review is instituted. If you would like a more rapid resolution of the review, you should consider either filing your preliminary response in advance of the due date or filing a paper stating that no preliminary response will be filed. As the patent owner, you may also file a disclaimer that disclaims one or more claims in the patent.
As the patent owner, you may file a formal patent-owner response to any grounds of unpatentability raised by the Board. You may also file a motion to amend the patent with this response, provided the amendment is responsive and does not enlarge the scope of the claims. Your amendment may include a reasonable number of substitute claims, but the new rules set forth a presumption that only one substitute claim is needed to replace each challenged claim; however, you can rebut this by demonstrating an acceptable need.
You cannot file additional motions to amend without Board authorization. However, additional motions may be permitted upon either a joint request of the petitioner and the patent owner made to materially advance a settlement of a proceeding or a request of the patent owner based on good cause.
Should the petitioner and patent owner reach a settlement during the course of the post-grant review proceeding, the process will be terminated upon written request of the parties unless the Patent Office has decided the merits of the proceeding before the request for termination is filed. Any agreement must be in writing, and a true copy of such agreement or understanding shall be filed in the Patent Office before the termination of the post-grant review.
VI. Estoppel and Stay in Civil Actions
Although not released in final form, the preliminary release of additions to Chapter 32 of Title 35 of the United States Code provides for automatic stays of civil actions and estoppel in future proceedings.
If the petitioner or real party in interest files a civil action challenging the validity of a patent claim on or after the date on which the petitioner files a petition for post-grant review of the patent, that civil action will be automatically stayed. The stay will remain in effect until any of the following occur: (1) the patent owner moves the court to lift the stay; (2) the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or (3) the petitioner or real party in interest moves the court to dismiss the civil action.
Where the proceeding results in a final written decision regarding a claim, the petitioner (or the real party in interest) may not: (1) request or maintain another proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during post-grant review; or (2) assert in a civil action or in a proceeding before the International Trade Commission that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.
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.