Post-Grant & Inter Partes Review
Procedures
Presented to AIPPI, Italy
February 10, 2012
By
Joerg-Uwe Szipl
Griffin & Szipl, P.C.
Post-Grant Review
 What is it?

A “request to cancel as unpatentable one or more claims
of a patent.” Section 321(b).
 What does it do?


Allows a patent to be challenged on essentially any
grounds under 35 USC 102 and all grounds under 35
USC 112, except best mode
Final rules to be provided by September 16, 2012
Post-Grant Review
 When Can You File?

No later than 9 months after the grant or reissue of a
patent. Section 321(c).
 Implementation


Applies to Applications filed on or after March 16, 2013
Excludes Applications with a priority date before March
16, 2013

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Only if all the claims are entitled to the earlier filing date
If any claims are not entitled to the earlier filing date, then PostGrant Review applies to all the claims
Standard for Post-Grant Review
 All post-grant reviews will be conducted by the
Patent Trial and Appeal Board (PTAB). Section
326(c); Section 6(b)(4).
 Two ways to meet threshold


Show “reasonable likelihood the petitioner would prevail
with respect to at least one” of the challenged claims.
Section 324(a).
Show that the petition “raises a novel or unsettled legal
question.” Section 324(b).
Post-Grant Review in Relation
to Other Actions






Post-grant review is barred by civil actions challenging the validity of a claim of the patent.
Section 325(a)(1).
If petitioner or real party in interest files a civil action on or after the filing date of a postgrant review petition, the civil action is automatically stayed. Section 325(a)(2).
A counter-claim challenging the validity of a patent does not constitute a civil action for the
purposes of this section. Section 325(a)(3).
The court cannot stay its consideration of a patent owner’s motion for preliminary injunction
against infringement of the patent on the basis that a post-grant review has been filed or
instituted if the action alleging infringement is filed within 3 months of the date of grant.
Section 325(b).
Petitioner is stopped from requesting or maintaining a civil action or a proceeding before the
Office or the ITC with respect to any ground that the petition raised or reasonably could have
raised during post-grant review. Section 325(e).
A post-grant review may not be instituted if the petition requests cancelation of a claim in a
reissue patent that is identical to or narrower than a claim in the original patent if the time
limitations would bar filing a petition for that original patent. Section 325(f).
Out with Inter Partes
Reexamination . . .
 AIA Section 6(c)(3): Inter Partes Reexamination to
be replaced by Inter Partes Review
 Transition Period: September 16, 2011 – September
16, 2012
 AIA Section 6(c)(3)(A): new rules for Inter Partes
Reexamination during transition period


Old Standard: Substantial New Question (SNQ)
New Standard: Reasonable Likelihood
And In With Inter Partes
Review
 Section 311
 Implementation Date: September 16, 2012

Requests for Inter Partes Reexamination filed on
or after September 16, 2012 will not be granted
Inter Partes Review
 What is it?


A “request to cancel as unpatentable one or more claims
of a patent.” Section 311(b).
Pretty similar to inter partes reexamination
 What does it do?

Allows a patent to be challenged on any “ground that
could be raised under section 102 or 103” that are based
on printed publications or patents. Section 311(b).
Inter Partes Review
 When can you file?


Any date more than 9 months after the grant or
reissue of a patent. Section 311(c)(1).
Unless there is a Post Grant Review, then any
date after the end of the Post Grant Review.
Section 311(c)(2).
Standard for Inter Partes
Review
 All inter partes reviews will be conducted by the Patent Trial
and Appeal Board (PTAB). Section 316(c); Section 6(b)(4).
 New, stricter standard: “reasonable likelihood the petitioner
would prevail with respect to at least one” of the challenged
claims. Section 314(a).
 "The threshold for initiating an inter partes review is elevated
from 'significant new question of patentability' -- a standard
that currently allows 95% of all requests to be granted -- to a
standard requiring petitioners to present information showing
that their challenge has a reasonable likelihood of success."
H.R. Rep. No. 112-98 (Part 1), at 47.
Inter Partes Review in Relation
to Other Actions
 Inter partes review is barred by civil actions challenging the validity of a
claim of the patent. Section 315(a)(1).
 If petitioner or real party in interest files a civil action on or after the
filing date of an inter partes review petition, the civil action is
automatically stayed. Section 315(a)(2).
 A counter-claim challenging the validity of a claim does not constitute a
civil action for the purposes of this section. Section 315(a)(3).
 Inter partes review is barred if the petition is filed more than 1 year after
the date a complaint alleging infringement is served. Section 315(b).
 Estopped from requesting or maintaining a civil action or a proceeding
before the Office or the ITC with respect to any ground that the petition
raised or reasonably could have raised during inter partes review.
Section 315(e).
Requirements for Inter Partes
and Post-Grant Review
 Petition Requirements: Sections 312(a) & 322(a)

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Payment of the fee
Identification of all real parties in interest
Identification, “in writing and with particularity,” of each
challenged claim, the grounds on which each challenge is based,
and the evidence supporting each grounds of challenge, including
copies of:

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Patents and printed publications
Affidavits or declarations of supporting evidence
Anything else the Director decides to require by regulation
 Publication Requirements: Sections 312(b) & 322(b)

“As soon as practicable” after receipt of petition by USPTO
Requirements for Inter Partes
and Post-Grant Review
 Requirements to Show Reasonable Likelihood: 37
C.F.R. 1.195

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A citation of all the art presented
A statement pointing out each showing of a reasonable
likelihood that the requester will prevail with respect to
at least one of the claims challenged in the request
A detailed explanation of the pertinency and manner of
applying the patents and printed publications to every
challenged claim
Requirements for Inter Partes
and Post-Grant Review
 Patent Owner’s Preliminary Response
Requirements: Sections 313 & 323

Explanation as to why no post-grant review should be
instituted “based upon the failure of the petition to meet any
requirement” of chapter 31
 Final Determination Deadline: Sections 316(a)(10)
& 326(a)(10).

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A final determination must be issued no later than one year
after the Director gives notice of the institution of an inter
partes or post-grant review
Director may, for good cause, extend this deadline by not
more than 6 months, or as necessary in case of joinder
Amendments and Burden of Proof for
Inter Partes and Post-Grant Review
 During inter partes or post-grant review, the patent
owner may file one motion to amend the patent in
one or more of the following ways. Sections
316(d)(1) & 326(d)(1).


Cancel any challenged patent claim
Propose a reasonable number of substitute claims for any
challenged claim
 The Petition has the burden of proving
unpatentability by a preponderance of evidence.
Sections 316(e) & 326(e).
Patent Trial and Appeal Board
 Witnesses who have submitted affidavits or declarations can
be deposed
 Parties can request discovery
 Both Parties have a right to present an oral argument before
the PTAB
 A panel of three “administrative patent judges” will conduct
all inter partes and post-grant reviews
 Decisions by PTAB can only be appealed to the Fed. Cir.
Section 141(c).


Questions of fact are reviewed on a “substantial evidence” standard –
NOT de novo
Questions of law are still reviewed de novo
Ex Parte Reexamination
 Standard Under 35 U.S.C. 303(a): Still Substantial
New Question


A SNQ is present if a reasonable Examiner would
consider the teaching of the prior art important in
determining patentability and the same question of
patentability has not already been decided
Prima facie case of unpatentability not necessary for a
SNQ to be present
 AIA abolishes trial de novo after a Board decision

Retroactive - applies to all cases pending on September
16, 2011
Ex Parte Reexamination
 Requirements under 37 CFR 1.510: “a statement
pointing out each SNQ based on prior patents and
printed publications”

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Must point out how the SNQ(s) are substantially
different from those raised in the first examination
Must demonstrate that the art relied on for the proposed
rejection presents a new, non-cumulative technological
teaching that was not previously considered
May be based on “old art” if presented in a new light or a
different way not previously considered