Summary of the USPTO proposals for challenging issued patents

One of the more significant developments in patent law over the past two months was the USPTO’s proposal of new rules for post-grant opposition proceedings under the America Invents Act.  The rules, proposed on February 9 and 10, 2012 in a series of Federal Register notices, will establish the following new proceedings for challenging patents and patent applications:

  • inter partes review (IPR), which may be used to challenge the validity of an issued patent on the basis of prior art patents or published applications;
  • post grant review (PGR), used may be used challenge the validity of an issued patent on any basis within 9 months of its grant;
  • a transitional program for covered business method patents (CBM), a variant of PGR that may be used by an entity who has been sued or charged with infringement of a patent covering data processing operations used in the management of a financial transaction or service;
  • derivation proceedings, which may be used by an inventor who claims that the invention covered by a co-pending application was derived from the inventor.

In each program listed above, any person may request a proceeding by filing a petition for review with the Patent Trial and Appeal Board (PTAB).  The PTAB will notify the patent owner, who may file a preliminary response within two months.  Then, if the Board determines that the petition meets the required criteria, it will initiate a trial to review the patent or application at issue.

Each of the proceedings will follow the general format of a trial, with the petitioner and patent owner each having a period for discovery, and an oral hearing at the end of the discovery period.  Petitioners can request that certain information in the petition be kept confidential and filed under seal.  The time required to obtain a decision in each proceeding can be as much as 15 months, although the parties may terminate a proceeding by written agreement at any time before the PTAB reaches a final decision.

The USPTO will grant a petition if it meets the applicable standards, which are:

  • IPR:  The petition must show that there is a reasonable likelihood that the petitioner will prevail on at least one claim of the patent.
  • PGR:  The petition must either: (a) show that it is more likely than not that at least one claim of the patent is unpatentable; or (b) raise a novel or unsettled legal question that is important to other patents or applications.  In addition, the petition must be filed within 9 months of the patent’s grant date.
  • CBM: The petitioner must have been sued for or charged with infringement of the patent.  In addition, the patent must claim a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, rather than a technological invention.
  • Derivation:  The petition must: (a) state with particularity the basis for finding that a named inventor in the earlier application derived the claimed invention from an inventor named in the petitioner’s application; and (b) be filed within one year of first publication of the earlier application.

The IPR, PGR and CBM rules will be made final and implemented by September 16, 2012.  The derivation proceeding rules will be made final and implemented by March 16, 2013.  The CBM rules will remain in effect for only four years, and will be repealed on September 16, 2020.

The new programs will carry hefty fees.  Under the proposal, the cost to file a petition for a PGR or CBM proceeding will be at least $35,800, while the cost to file an IPR petition will be $27,200.  The USPTO asserts that these costs are required to cover its administrative costs, but are in fact likely to result in filing only in cases where the financial implications to the petitioner are significant

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