AIA creates three administrative trial procedures to request review of the patentability of issued patents outside of litigation: (1) post-grant review; (2) the transitional program for covered business method patents; and (3) inter partes review.
Under these administrative trial procedures, third parties may file a petition with the PTAB challenging the validity of issued patents. While each of these procedures have different requirements (including timing restrictions, grounds for challenging validity, and who may request review), all of these procedures allow for (1) the opportunity for patent owners to respond to and challenge a petition for review; (2) the opportunity for an oral hearing before a decision on the merits; (3) opportunities for limited discovery; and (4) the availability of termination by settlement between the petitioner and the patent owner.
Post-Grant Review (PGR) allows third parties to challenge the validity of issued patents within the first nine months following the grant of a patent or issuance of a reissue patent. Any party that is not the owner of the patent and that has not filed a civil action challenging the validity of the patent may file a petition for post-grant review. Patentability challenges can be based on any ground available under 35 U.S.C. § 282(b)(2)–(3), including statutory subject matter (§ 101), novelty (§ 102), and obviousness (§ 103), as well as failure to comply with 35 U.S.C. § 112 (with the exception of best mode). Note that this procedure is only available to challenge the validity of patents issuing from applications filed after May 16, 2013.
The Transitional Program for Post-Grant Review of Covered Business Method Patents (CBM TPGR) provides for a specific type of post-grant review for covered business method patents. Any third party who has been sued for or charged with infringement under a covered business method patent may challenge the validity of that patent using this procedure. Unlike other PGRs, there is no nine-month time limit for filing, and this procedure is available for all issued patents, not just those issuing from applications filed after May 16, 2013.
Inter Partes Review (IPR) replaced the inter partes reexamination practice, and allows a third-party to challenge validity based on patents and/or printed publications. For post-AIA patents, an IPR must be filed after the later of the nine-month period for filing a PGR and the date of termination of any PGR of the patent. If the third party is a defendant in an infringement action, the IPR must be filed within one year of service of the complaint. Patentability challenges can be based on any ground available under 35 §§102 and 103 based on patents and/or patent publications.
PTAB Trial Practice and Procedure
- General Administrative Trial Final Rules (August 14, 2012)
- Trial Practice Guide (August 14, 2012)
- Inter Partes, Post Grant, and Covered Business Method Review Final Rules (August 14, 2012)
- Lead Judge Tierney’s Tips for Petitions and Arguments Before PTAB
USPTO Answers to Frequently Asked Questions
General Useful Links
- USPTO: PTAB Overview
- USPTO: Summary of Inter Partes Disputes
- Overview of Post Grant Procedures and Comparison to Ex Parte Reexamination
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