• Cassandra L. Wilkinson

Post-Grant and Inter Partes Review


What do you do if your competitor obtains a patent that you think is invalid? Before the America Invents Act (“AIA”) went into effect, you had the option of requesting inter partes reexamination or ex parte reexamination. The primary difference between the two was that you, as the third party requestor, remained involved throughout an inter partes reexamination, while an ex parte reexamination is strictly between the patent owner and the United States Patent and Trademark Office. Ex parte reexamination is still available today; however, since September 16, 2012, inter partes reexamination is no longer allowed. Two new proceedings have taken its place: post-grant review and inter partes review.
In post-grant review, pursuant to 35 U.S.C. §§ 321 et seq., a person other than the patent owner may request the Patent Trial and Appeal Board (“the Board”) to consider whether one or more claims of a patent are invalid. Post-grant review is available for the first nine months after a patent is granted, so long as the patent is based on an application filed after the first-inventor-to-file provisions of the AIA went into effect on March 16, 2013. It is not available for patents based on applications filed prior to that date.
Inter partes review is available pursuant to 35 U.S.C. §§ 311 et seq. It allows a person who is not the owner of a patent to request the cancellation of one or more claims of a patent as unpatentable as anticipated by or obvious in light of prior art consisting of patents or printed publications. For patents filed under the first-inventor-to-file system, inter partes review is only available nine months after the issuance of the patent and thereafter; patents filed under the first-to-invent system, on the other hand, are not required to wait until nine months after the patent issued to file for inter partes review. This is because post-grant review is only allowed in patents filed under the first-inventor-to-file system, so inter partes review is the only inter partes procedure available in patents filed under the first-to-invent system.
To request either type of review, the requestor must pay a fee, file a petition, and provide copies of the prior art documents and documents supporting expert opinions relied upon in the petition. The fee is quite large: for post-grant review, the fee is $12,000 plus $250 for each claim over 20, with a post-institution fee of $18,000 plus a fee of $550 for each claim over 15. For inter parte review, the request fee is $9,000 plus $200 per claim in excess of 20. In addition, there is a post-institution fee of $14,000 plus $400 per claim in excess of 15. The post-institution fee is not required if the request is denied.
By statute, the petition must identify all real parties in interest and must set forth each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim. Additionally, under the rules, the petition must identify the grounds for standing, provide a claim construction for each challenged claim, specifically explain the grounds for unpatentability, and specifically explain the relevance of evidence relied upon.
After the petition is filed, the patent owner has an opportunity to respond. The patent owner has up to three months to file a response, or may waive the response and allow the Board to proceed on the petition alone. After the patent owner’s response or waiver, the Board has three months to decide whether to institute the review. The standard is whether the information presented in the petition and any response shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Statistics for the first year in which inter partes review was available show that the Board initiates review on 87.4% of the claims challenged, but only 47.4% of the grounds raised. Presumably multiple grounds are typically raised regarding a given claim, allowing the Board to initiate review as to a claim based on less than all grounds raised.
Once instituted, the review must be completed within one year, with an additional six months available for good cause. During the review, the patent owner may file a motion to amend the patent, but amendments are more limited than in reexamination. The scope of the claims may not be enlarged and new matter may not be introduced. Both the patent owner and the petitioner have an opportunity to submit additional information before the Board rules on the review. The burden of proof in a review lies with the petitioner, who must show unpatentability by a preponderance of the evidence.
Once instituted, a review may be terminated by settlement of the parties. A decision by the board is appealable. Once the Board issues a final written decision in a review, the petitioner may not raise any claim that in could have raised in the review in any civil action or other proceeding.
Here is a timeline as set forth in the Federal Register:

There is one limitation on when post grant review may be requested. Section 325(a) states, “A post-grant review may not be instituted under this chapter if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” The law specifies that a counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim for purposes of this subsection. Section 315(a) sets forth the same limitation on when inter partes review may be requested. Additionally, Section 315(b) prevents the institution of inter partes review more than one year after the date the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

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