10 Points on AIA Post Grant Proceedings

These are based on a talk given by Michele Bosch at Finnegan on 8 May 2014.  This was a long and comprehensive talk with many statistics given. The 10 points below reflect my own observations rather than being an attempt to summarise the talk.

1. The new AIA post grant trials are:

Inter Partes Review (IPR) available on all patents from 16 September 2012 and a Petition needs to be filed within one year of service of an infringement complaint,

-Post Grant Review (PGR) available from 16 March 2013 on all ‘first-inventor-to-file’ patents and a Petition needs to be filed within 9 months of grant, and

– Transitional Covered Business Method Patent Post-Grant Review (CBM) available from 16 September 2012 to 2020 on all ‘covered business method’ patents and a Petitioner must be sued or charged with infringement.

The number of petitions filed as of 2 April 2014 is over 1260 (1100 for IPR, 160 for CBM).

2.  There is a strong interest in post-grant trials at the USPTO because the Patent Trail and Appeal Board (PTAB) is perceived as a ‘friendlier’ forum than the Courts to challenge patents, the costs are lower ($300-400k versus over $1 million in Court proceedings), there is the possibility of stay of litigation, it is speedy and has procedural advantages, settlements are possible at this stage and it may influence the final Court decision.  The USPTO construes claims more broadly and there is no presumption of validity.  In addition the decisions are taken by Administrative Patent Judges who have no problem in finding patents invalid.

3.  The three post-grant trials are different from each other in many ways.  They have different thresholds before proceedings can be initiated (e.g. IPR has ‘reasonable likelihood of success’), the proceedings have different grounds on which the patent can be attacked and they have different estoppel effects.  Anonymity is not possible (unlike in reexamination).

4.  In the first 18 months of IPR and CBMS some or all claims were cancelled on all patents.  However 2 patents have now been upheld with all claims found to be patentable.  Only 15% of petitions are denied. About 10% of instituted proceedings end with settlement.  Most trials have been in the areas of electrical or computer inventions.

5.  There are some similarities to EPO opposition, but there are also real differences.  Clearly if the same patent is being attacked in the two territories, then it is possible to make use of documents from one proceedings in the other.

6.  There are strict page limits and format requirements for the documents filed during the proceedings.  There are additional strict criteria for amendment requests, and many amendment requests have failed for procedural reasons. In fact no amendment requests have been granted to date, apart from ones where there were only claim deletions.

7.  The PTAB is quick to use redundancy reasons for eliminating grounds and documents, and therefore thought should be given to explaining why there are distinctions between the grounds and documents.

8. The PTAB has stayed ex parte and inter parte re-examination proceedings when trials are initiated.  The Courts will also tend to stay, but not always.

9. Claim construction is very important and can often be decisive.  The PTAB is willing to use its own.

10.  There is a very limited discovery process.  Additional discovery beyond the routine is often denied.

You may also be interested in the related articles Top 10 Tips For Success In EPO Appeals on Biotech Cases and Tips for Opposition Success.

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