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No. 26
September 2012
International Association for the Protection of Intellectual Property
AIPPI General Secretariat |Toedistrasse 16 | P.O.Box |CH-8027 Zurich
Tel. +41 44 280 58 80 | Fax +41 44 280 58 85
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Transitioning From Inter Partes Reexamination (IPX) to Inter Partes Review (IPR) Under the AIA: Highlights of the USPTO IPR Final Rules
Anne L. St. Martin, Oblon, Spivak, McClelland, Maier & Neustadt, LLP, Alexandria, U.S.

The Inter Partes Review (IPR) section of the America Invents Act (AIA) in the US becomes effective September 16, 2012 and applies to any patent issued before, on, or after said date. Under recently published final USPTO rules, the fee for filing an IPR petition will be $27,200 for a challenge of up to 20 claims and $600 for each additional claim over 20. The new IPR proceedings adopt the threshold for Inter Partes Reexamination (IPX) that became effective September 16, 2011, namely a “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.” This threshold requires that the petitioner demonstrate unpatentability under 35 U.S.C. §102 or §103 on the basis of prior art consisting of patents and printed publications only, with the Patent Trial and Appeals Board (PTAB) taking into account any patent owner preliminary response. Thus, it is expected that the grant rate of IPR will be lower than that for IPX, because an IPX proceeding does not permit a patent owner preliminary response.

An IPR petition may be filed after the later of either (1) nine months following grant of a patent or issuance of a reissue patent, or (2) if a Post-Grant Review (PGR) is instituted, the date of termination of that post-grant review. Because PGR proceedings may only be pursued for patents having an effective filing date on or after March 16, 2013, the number of PGR petitions is likely to be low in 2014 and for the first few years thereafter. Parties facing litigation must file any desired IPR petition within one year after being served with a complaint alleging infringement and are barred from doing so if they have previously filed a declaratory judgment action claiming invalidity of the patent.

The estoppel effect of IPX is expanded in IPR as the petitioner in IPR proceedings is estopped from asserting in a civil action, an ITC proceeding or a PTO proceeding a claim based on any ground that the petitioner raised or could have raised during the IPR proceedings. Each party in the IPR proceedings will have a right to an oral hearing conducted before a panel of at least three Administrative Patent Judges of the PTAB. The Central Re-Examination Unit will continue to handle still pending IPX proceedings as well as Ex parte reexamination and the new supplemental examination proceedings. The IPR proceeding must be concluded within one year from the institution of the proceedings, with the USPTO having discretion to extend this deadline by six months for good cause, including when joinder occurs. This statutory time limit addresses the concerns about the delays associated with IPX and should therefore lead to an increase in litigation stays pending the outcome of the IPR proceedings. The IPR proceedings will conclude with a final written decision and issuance of an electronic review certificate. Although IPR proceedings may be terminated by settlement, the PTAB has discretion to proceed with a final written decision. Appeals are to be filed directly to the Federal Circuit.

For a copy of the Final Rules issued by the USPTO, See http://www.uspto.gov/aia_implementation/fr_specific_trial.pdf

For an in depth review of all the new post grant proceedings under the AIA, See Practicing Law Institute (PLI): Post Grant Proceedings Before the Patent Trial and Appeal Board
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