Inter Partes Review Under AIA is Underway …

As we previously discussed, the new inter partes review (IPR) procedures went into effect September 16, 2012, along with several other significant changes.

The IPR procedure replaces the previous inter partes reexamination and applies to any patent issued before, during, or after September 16, 2012. This removes one of the hurdles of the previous inter partes reexamination which applied only to applications filed after November 29, 1999. The PTO will only accept a valid IPR petition nine months after a patent issues. As in inter partes reexamination, the IPR permits the petitioner to challenge claims as being anticipated or obvious in view of published prior art references. Also, like the previous inter partes reexamination, IPR carries with it an estoppel effect barring the IPR petitioner from asserting the invalidity of any challenged claim on the same arguments and references in any district court action.

IPR differs significantly from inter partes reexamination in terms of the actual procedure, the decision maker, timing and costs. Unlike inter partes reexamination before an examiner, the IPR proceeding takes place before a panel of three administrative judges. The procedure is statutorily required to be completed within twelve months from the grant of the IPR (extended up to 18 months with good cause). Because the IPR process is setup like a “mini trial” its attendant costs are significantly higher than inter partes reexamination.

To date, according to the PTO website, nearly thirty (30) cases have been filed so far.

Practitioners should continue to monitor developments and trends relating to this important new rule.

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