The America Invents Act of 2011 formed the Patent Trial and Appeal Board (PTAB) and replaced inter partes patent reexamination with two inter partes dispute proceedings: inter partes review (IPR) and post-grant review (PGR). (Ex parte patent reexaminations continue to be available for unexpired U.S. patents).
IPR and PGR will introduce new, court-like elements to patent office proceedings, injecting new strategic considerations and requiring experience and skills new to patent office advocacy.
Kilpatrick Townsend's Patent Reexamination & Inter Partes Disputes team draws on its patent prosecution and patent litigation practices that are each among the largest in the world. These practices provide an unmatched combination of deep experience and skill in both patent offices and courts with comprehensive science and engineering academic credentials and industrial experience.
Our Patent Reexamination & Inter Partes Disputes team has represented patent owners and challengers in more than 100 U.S. patent reexamination proceedings and is well-experienced with European opposition proceedings that are quite similar to the new U.S. proceedings. Our litigators conduct focused and efficient discovery and are masters of the courtroom, coupling penetrating cross examinations with winning oral arguments, skills and experience that will be essential in the new IPR and PGR proceedings.
In short, Kilpatrick Townsend’s team has the credentials, expertise, experience and judgment to guide its clients successfully through the challenges of the new IPR and PGR proceedings.
- Ex parte Reexamination
In an ex parte patent reexamination, the United States Patent and Trademark Office reconsiders the validity of a previously issued patent in response to a request by a patent challenger or owner. One patent examiner considers whether the patent claims are novel and non-obvious over prior patents and printed publications cited by the reexamination requestor. Other types of prior art and theories of patent invalidity cannot be asserted during an ex parte reexamination and must instead be raised in litigation. Unlike a typical lay jury or judge in litigation, a patent examiner will have extensive experience with the technical subject matter. Furthermore, unlike a court jury or judge, a patent examiner is not required to presume that the patent is valid and is therefore not find “clear and convincing” evidence of invalidity. After filing a request for reexamination, a party that is not the patent owner cannot participate in an ex parte reexamination, only the patent owner and the U.S. Patent and Trademark Office are involved.
Ex parte patent reexaminations require intimate familiarity with the rules of practice and procedure in U. S. Patent Office, as well as technical expertise in the patented subject matter. Drawing on its extensive reexamination experience, deep and wide-ranging technical expertise and world-class patent prosecution practice, the Kilpatrick Townsend Patent Reexamination & Inter Partes Disputes team effectively handles strategically important and technically complex patent reexaminations across a daunting range of cutting edge technologies.
- Inter Partes Disputes
Patents can be challenged in two new inter partes dispute proceedings as of September 16, 2012: inter partes review (IPR) and post grant review (PGR). IPR and PGR are proceedings in the patent office to review patentability of patent claims and both are before a three member Patent Trial and Appeal Board (PTAB).
Patentability may be challenged in an IPR only on a ground that could be raised under 35 U.S.C. §§ 102 (novelty) or 103 (obviousness), and only on the basis of prior art consisting of patents or printed publications. The PTAB will institute an IPR if it finds a reasonable likelihood that the petitioner would prevail with respect to at least one challenged patent claim, and a final determination by the PTAB will be issued within one year (extendable for good cause by six months). IPR is available for a patent issued at any time but cannot be sought until after the later of: (a) nine months after the issuance or reissuance of the patent; or (b) termination of any PGR that has been instituted for the patent.
A PGR is initiated by a petition filed no later than nine months after the issuance or reissuance of the patent. Patentability may be challenged in a PGR on any ground under 35 U.S.C. §§ 102 (novelty), 103 (obviousness), 112 (specification) or 251 (reissue of defective patents). The PTAB will initiate a PGR if it is more likely than not that at least one challenged claim is unpatentable, and a final determination is to be issued within one year (extendable for good cause by six months). Except for certain “business method” patents, PGR will only be available for patents applied for after March 15, 2013, so this proceeding will be little-used until about 2014 when patents begin to issue from March 15, 2013 and later applications.