Inter Partes Review
Inter partes review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting inter partes review will take effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.
United States of America
Until 2011, there was no opposition system stricto sensu in the patent system of the United
States of America. However, the Leahy-Smith America Invents Act (AIA) of September 16,
2011, provided for additional options for challenging patent validity which entered into force
on September 16, 2012. A post-grant review, which is a time-bound inter partes review
mechanism, has been introduced, and the former inter partes re-examination procedure has
been replaced bythe inter partes review. The post-grant review provides a time limit of nine
months after the grant of a patent to file a petition and, therefore, is similar to post-grant
opposition mechanisms.
Post-grant review
The post-grant review is a trial proceeding conducted at the Patent Trial and Appeal Board to
review the patentability of one or more claims in a patent on any ground that could be raised
under 35 U.S.C. § 282(b)(2) or (3). The Patent Trial and Appeal Board is composed, in case
of a post-grant review, of at least three administrative patent judges, having legal knowledge
and scientific ability, as designated by the Director.1
According to 35 U.S.C. § 321, the post-grant review process begins with a third party filing a
petition on or prior to the date that is nine months after the grant of the patent or issuance of
a reissue patent.2
The petition has to contain the payment of a fee, provide for the grounds
including evidence to those grounds. The petition is made available to the public.3
The
patent owner may provide a preliminary response to the petition within a time period set by
the Director. The institution of the post-grant review is conditioned by a threshold according
to 35 U.S.C. § 324. A post-grant review may be instituted upon a showing that it is more
likely than not that at least one claim challenged is unpatentable. An additional ground may
also be that the petition raises a novel or unsettled legal question that is important to other
patents or patent applications. It is not possible to appeal to the determination whether to
institute a post-grant review.
If the proceeding is instituted and not dismissed, a final determination by the Board will be
issued within one year, extendable up to six months.4
The procedure for conducting postgrant
review took effect on September 16, 2012, and generally applies to patents issuing from
applications subject to first-inventor-to-file provisions of the AIA. The post-grant review will
have an estoppel effect for civil action on any ground the requester raised or reasonably could
have raised during the post-grant review.5
It will not be possible to request a post-grant
review after a civil action has been started, and in case of a later civil action, it will have to
stay under the conditions set by 35 U.S.C. § 325.
The conduct of the post-grant review by the Patent Trial and Appeal Board provide inter
partes proceedings, including either parties rights to an oral hearing as part of the
proceedings. In the post-grant review, the petitioner shall have the burden of providing a
proposition of unpatentability by a preponderance of the evidence according to 35 U.S.C. §
326. Either party may appeal the final decision of the Patent Trial and Appeal Board to the
Court of Appeals for the Federal Circuit.
1 35 U.S.C. § 6 (a)(c).
2 35 U.S.C. § 321 (c).
3 35 U.S.C. § 322.
4 35 U.S.C. § 326 (11).
5 35 U.S.C. § 325 (e).
Inter partes review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting inter partes review will take effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.
United States of America
Until 2011, there was no opposition system stricto sensu in the patent system of the United
States of America. However, the Leahy-Smith America Invents Act (AIA) of September 16,
2011, provided for additional options for challenging patent validity which entered into force
on September 16, 2012. A post-grant review, which is a time-bound inter partes review
mechanism, has been introduced, and the former inter partes re-examination procedure has
been replaced bythe inter partes review. The post-grant review provides a time limit of nine
months after the grant of a patent to file a petition and, therefore, is similar to post-grant
opposition mechanisms.
Post-grant review
The post-grant review is a trial proceeding conducted at the Patent Trial and Appeal Board to
review the patentability of one or more claims in a patent on any ground that could be raised
under 35 U.S.C. § 282(b)(2) or (3). The Patent Trial and Appeal Board is composed, in case
of a post-grant review, of at least three administrative patent judges, having legal knowledge
and scientific ability, as designated by the Director.1
According to 35 U.S.C. § 321, the post-grant review process begins with a third party filing a
petition on or prior to the date that is nine months after the grant of the patent or issuance of
a reissue patent.2
The petition has to contain the payment of a fee, provide for the grounds
including evidence to those grounds. The petition is made available to the public.3
The
patent owner may provide a preliminary response to the petition within a time period set by
the Director. The institution of the post-grant review is conditioned by a threshold according
to 35 U.S.C. § 324. A post-grant review may be instituted upon a showing that it is more
likely than not that at least one claim challenged is unpatentable. An additional ground may
also be that the petition raises a novel or unsettled legal question that is important to other
patents or patent applications. It is not possible to appeal to the determination whether to
institute a post-grant review.
If the proceeding is instituted and not dismissed, a final determination by the Board will be
issued within one year, extendable up to six months.4
The procedure for conducting postgrant
review took effect on September 16, 2012, and generally applies to patents issuing from
applications subject to first-inventor-to-file provisions of the AIA. The post-grant review will
have an estoppel effect for civil action on any ground the requester raised or reasonably could
have raised during the post-grant review.5
It will not be possible to request a post-grant
review after a civil action has been started, and in case of a later civil action, it will have to
stay under the conditions set by 35 U.S.C. § 325.
The conduct of the post-grant review by the Patent Trial and Appeal Board provide inter
partes proceedings, including either parties rights to an oral hearing as part of the
proceedings. In the post-grant review, the petitioner shall have the burden of providing a
proposition of unpatentability by a preponderance of the evidence according to 35 U.S.C. §
326. Either party may appeal the final decision of the Patent Trial and Appeal Board to the
Court of Appeals for the Federal Circuit.
1 35 U.S.C. § 6 (a)(c).
2 35 U.S.C. § 321 (c).
3 35 U.S.C. § 322.
4 35 U.S.C. § 326 (11).
5 35 U.S.C. § 325 (e).
