Inter Partes Review
Inter Partes Review - Rules
Section 42.100: Procedure; pendency.
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(a) An inter partes review is a trial subject to the procedures set forth in subpart A of this part.
(b) A claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.
(c) An inter partes review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge, or adjusted by the Board in the case of joinder.
Section 42.100(a) provides that an inter partes review is a trial and subject to the rules set forth in subpart A of title 42, Code of Federal Regulations.
Section 42.100(b) provides that a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification in which it appears.
Section 42.100(c) provides a one-year time frame for administering the proceeding after institution, with up to a six-month extension for good cause.
- The one-year period may be adjusted by the Board in the case of joinder.
Section 42.101: Who may petition for inter partes review.
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A person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent unless:
- (a) Before the date on which the petition for review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent;
- (b) The petition requesting the proceeding is filed more than one year after the date on which the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent; or
- (c) The petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.
Section 42.101(a) provides that a party or real party-in-interest must file a petition prior to the filing of a civil action challenging the validity of a claim of the patent.
Section 42.101(b) provides that a petition may not be filed more than one year after the date on which the petitioner, the petitioner’s real party-ininterest, or a privy of the petitioner was served with a complaint alleging infringement.
Section 42.101(c) provides that a petition may not be filed where the petitioner, the petitioner’s real party-ininterest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.
Section 42.102: Time for filing.
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(a) A petition for inter partes review of a patent must be filed after the later of the following dates, where applicable:
(1) If the patent is a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act, the date that is nine months after the date of the grant of the patent;
(2) If the patent is a patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant of the patent; or
(3) If a post-grant review is instituted as set forth in subpart C of this part, the date of the termination of such post-grant review.
(b) The Director may impose a limit on the number of inter partes reviews that may be instituted during each of the first four one-year periods in which the amendment made to chapter 31 of title 35, United States Code, is in effect by providing notice in the Office's Official Gazette or Federal Register. Petitions filed after an established limit has been reached will be deemed untimely.
Section 42.102(a) provides that a petition for inter partes review must be filed consistent with the requirements set forth in 35 U.S.C. 311(c).
- Petitions requesting the institution of an inter partes review that are filed nine months after the grant of the patent or of the issuance of the reissue patent, but prior to the institution of a post-grant review would be considered timely filed.
- Additionally, petitions filed after termination of a post-grant review would be considered timely.
Section 42.102(b) provides that the Director may set a limit on the number of inter partes reviews that may be instituted during each of the first four one-year periods after inter partes review takes effect.
Section 42.103: Inter partes review fee.
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(a) An inter partes review fee set forth in § 42.15(a) must accompany the petition.
(b) No filing date will be accorded to the petition until full payment is received.
Section 42.103(a) provides that a fee under § 42.15(a) must accompany a petition for inter partes review.
Section 42.103(b) provides that that no filing date will be accorded until full payment is received.
Section 42.104: Content of petition.
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In addition to the requirements of §§ 42.6, 42.8, 42.22, and 42.24, the petition must set forth:
- (a) Grounds for standing. The petitioner must certify that the patent for which review is sought is available for inter partes review and that the petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in the petition.
- (b) Identification of challenge. Provide a statement of the precise relief requested for each claim challenged. The statement must identify the following:
- (1) The claim;
- (2) The specific statutory grounds under 35 U.S.C. 102 or 103 on which the challenge to the claim is based and the patents or printed publications relied upon for each ground;
- (3) How the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f) , the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function;
- (4) How the construed claim is unpatentable under the statutory grounds identified in paragraph (b)(2) of this section. The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and
- (5) The exhibit number of the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge. The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.
- (c) A motion may be filed that seeks to correct a clerical or typographical mistake in the petition. The grant of such a motion does not change the filing date of the petition.
Section 42.104(a) provides that a petition must demonstrate that the petitioner has standing.
- To establish standing, a petitioner, at a minimum, must certify that the patent is available for inter partes review and that the petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims.
- This requirement is to ensure that a party has standing to file the inter partes review and would help prevent spuriously instituted inter partes reviews.
- Facially improper standing will be a basis for denying the petition without proceeding to the merits of the petition.
Section 42.104(b) requires that the petition identify the precise relief requested for the claims challenged.
- Specifically, the rule requires that the petition identify each claim being challenged, the specific grounds on which each claim is challenged, how the claims are to be construed, why the claims as construed are unpatentable under the identified grounds, and the exhibit numbers of the evidence relied upon with a citation to the portion of the evidence that is relied upon to support the challenge.
- The rule provides an efficient means for identifying the legal and factual basis for satisfying the threshold for instituting inter partes review and provides the patent owner with notice as to the basis for the challenge to the claims.
Section 42.104(c) provides that a petitioner seeking to correct clerical or typographical mistakes in a petition could file a motion to correct the mistakes.
- The rule also provides that the grant of such a motion would not alter the filing date of the petition.
Section 42.105: Service of petition.
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In addition to the requirements of § 42.6, the petitioner must serve the petition and exhibits relied upon in the petition as follows:
- (a) The petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent. The petitioner may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service.
- (b) Upon agreement of the parties, service may be made electronically. Service may be by Priority Mail Express ® or by means at least as fast and reliable as Priority Mail Express ®. Personal service is not required.
Section 42.105(a) requires that the petitioner serve the patent owner at the correspondence address of record for the subject patent and permits service at any other address known to the petitioner as likely to effect service as well.
- Once a patent has issued, communications between the Office and the patent owner often suffer.
- While the rule requires service at the correspondence address of record in the patent, the petitioner will already be in communication with the patent owner, in many cases, at a better service address than the correspondence address of record for the subject patent.
Section 42.105(b), as adopted in this final rule, provides that upon agreement of the parties, service may be made electronically, and service may be made by EXPRESS MAIL® or by means at least as fast and reliable as EXPRESS MAIL®.
- Personal service is not required.
Section 42.106: Filing date.
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(a) Complete petition. A petition to institute inter partes review will not be accorded a filing date until the petition satisfies all of the following requirements:
(1) Complies with § 42.104;
(2) Effects service of the petition on the correspondence address of record as provided in § 42.105(a); and
(3) Is accompanied by the fee to institute required in § 42.15(a).
(b) Incomplete petition. Where a party files an incomplete petition, no filing date will be accorded, and the Office will dismiss the petition if the deficiency in the petition is not corrected within one month from the notice of an incomplete petition.
Section 42.106(a) specifies the requirements for a complete petition.
- 35 U.S.C. 312(a) states that a petition may only be considered when the petition identifies all the real parties in interest, when a copy of the petition is provided to the patent owner or the owner’s representative and the petition is accompanied by the fee established by the Director.
- Consistent with the statute, the rule requires that a petition to institute an inter partes review will not be accorded a filing date until the petition:
- (1) Complies with § 42.104;
- (2) is served upon the patent owner at the correspondence address of record; and
- (3) is accompanied by the fee.
Section 42.106(b) provides petitioners a one month time frame to correct defective petitions to institute an inter partes review.
- The Board may not consider a petition that fails to meet the statutory requirements for a petition.
- In determining whether to grant a filing date, the Board will review the petitions for procedural compliance.
- Where a procedural defect is noted, e.g., failure to state the claims being challenged, the Board will notify the petitioner that the petition was incomplete and identify any non-compliance issues.
Section 42.107: Preliminary response to petition.
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(a) The patent owner may file a preliminary response to the petition. The response is limited to setting forth the reasons why no inter partes review should be instituted under 35 U.S.C. 314. The response can include evidence except as provided in paragraph (c) of this section. The preliminary response is subject to the page limits under § 42.24.
(b) Due date. The preliminary response must be filed no later than three months after the date of a notice indicating that the request to institute an inter partes review has been granted a filing date. A patent owner may expedite the proceeding by filing an election to waive the patent owner preliminary response.
(c) No new testimonial evidence. The preliminary response shall not present new testimony evidence beyond that already of record, except as authorized by the Board.
(d) No amendment. The preliminary response shall not include any amendment.
(e) Disclaim Patent Claims. The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.
Section 42.107(a) provides that the patent owner may file a preliminary response to the petition.
Section 42.107(b) provides that the due date for the preliminary response to the petition is no later than three months from the date of the notice that the request to institute an inter partes review has been granted a filing date.
- This rule is consistent with 35 U.S.C. 313 which provides that the Director shall set a time period for filing the patent owner preliminary response.
- Under 35 U.S.C. 314(b) the Board has three months from the filing of the patent owner preliminary response, or three months from the date such a response was due, to determine whether to institute the review.
- A patent owner seeking a shortened period for such a determination may wish to file a patent owner preliminary response well before the date the patent owner preliminary response is due, or file a paper stating that no patent owner preliminary response will be filed.
- No adverse inferences will be drawn where a patent owner elects not to file a response or elects to waive the response.
Section 42.107(c) provides that the patent owner preliminary response is not allowed to present new testimony evidence, for example, expert witness testimony on patentability.
- 35 U.S.C. 313 provides that a patent owner preliminary response set forth reasons why no inter partes review should be instituted.
- In contrast, 35 U.S.C. 316(a)(8) provides for a patent owner response after institution and requires the presentation, through affidavits or declarations, of any additional factual evidence and expert opinions on which the patent owner relies in support of the response.
- The difference in statutory language demonstrates that 35 U.S.C. 313 does not require the presentation of evidence in the form of testimony in support of a patent owner preliminary response and the rule reflects this distinction.
- In certain instances, however, a patent owner may be granted additional discovery before filing its preliminary response and submit any testimonial evidence obtained through the discovery.
- For example, additional discovery may be authorized where patent owner raises sufficient concerns regarding the petitioner’s certification of standing.
Section 42.107(d) provides that the patent owner preliminary response cannot include any amendment.
Section 42.107(e) provides that the patent owner may file a statutory disclaimer disclaiming one or more claims in the patent, and no inter partes review will be instituted to review disclaimed claims.
INSTITUTING INTER PARTES REVIEW
Section 42.108: Institution of inter partes review.
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(a) When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.
(b) At any time prior to institution of inter partes review, the Board may deny some or all grounds for unpatentability for some or all of the challenged claims. Denial of a ground is a Board decision not to institute inter partes review on that ground.
(c) Sufficient grounds. Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable. The Board's decision will take into account a patent owner preliminary response where such a response is filed.
Section 42.108(a) provides that the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.
- Specifically, in instituting the review, the Board may authorize the review to proceed on the challenged claims for which the threshold requirements for the proceeding have been met.
- The Board will identify the grounds upon which the review will proceed on a claim-by-claim basis.
- Any claim or issue not included in the authorization for review is not part of the review.
- The Office intends to publish a notice of the institution of an inter partes review in the Official Gazette.
Section 42.108(b) provides that the Board, prior to institution of a review, may deny some or all grounds for unpatentability on some or all of the challenged claims.
- The rule is consistent with the efficient administration of the Office, which is a consideration in prescribing inter partes review regulations under 35 U.S.C. 316(b).
Section 42.108(c) provides that the institution is based on a reasonable likelihood standard and is consistent with the requirements of 35 U.S.C. 314(a).
- A reasonable likelihood standard is a somewhat flexible standard that allows the judge room for the exercise of judgment.
AFTER INSTITUTION OF INTER PARTES REVIEW
Section 42.120: Patent owner response.
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(a) Scope. A patent owner may file a response to the petition addressing any ground for unpatentability not already denied. A patent owner response is filed as an opposition and is subject to the page limits provided in § 42.24.
(b) Due date for response. If no time for filing a patent owner response to a petition is provided in a Board order, the default date for filing a patent owner response is three months from the date the inter partes review was instituted.
Section 42.120(a) provides for a patent owner response and is consistent with the requirements of 35 U.S.C. 316(a)(8).
Section 42.120(b) provides that if no time for filing a patent owner response to a petition is provided in a Board order, the default time for filing the response is three months from the date the inter partes review was instituted.
- The Board’s experience with patent owner responses is that three months provides a sufficient amount of time to respond in a typical case, especially as the patent owner would already have been provided three months to file a patent owner preliminary response prior to institution of the inter partes review.
- Additionally, the time period for response is consistent with the requirement that the trial be conducted such that a final written decision is rendered within one year of the institution of the review.
Section 42.121: Amendment of the patent.
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(a) Motion to amend. A patent owner may file one motion to amend a patent, but only after conferring with the Board.
(1) Due date. Unless a due date is provided in a Board order, a motion to amend must be filed no later than the filing of a patent owner response.
(2) Scope. A motion to amend may be denied where:
(i) The amendment does not respond to a ground of unpatentability involved in the trial; or
(ii) The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.
(3) A reasonable number of substitute claims. A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims. The presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.
(b) Content. A motion to amend claims must include a claim listing, which claim listing may be contained in an appendix to the motion, show the changes clearly, and set forth:
(1) The support in the original disclosure of the patent for each claim that is added or amended; and
(2) The support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.
(c) Additional motion to amend. In addition to the requirements set forth in paragraphs (a) and (b) of this section, any additional motion to amend may not be filed without Board authorization. An additional motion to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement. In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in paragraph (a)(1) of this section.
Section 42.121(a) makes it clear that the first motion to amend need not be authorized by the Board.
- The motion will be entered so long as it complies with the timing and procedural requirements.
- Additional motions to amend will require prior Board authorization.
- All motions to amend, even if entered, will not result automatically in entry of the proposed amendment into the patent.
- The requirement to consult the Board reflects the Board’s need to regulate the substitution of claims and the amendment of the patent to control unnecessary proliferation of issues and abuses.
- The rule aids the efficient administration of the Office and the timely completion of the review under 35 U.S.C. 316(b).
- Section 42.121(a) also provides that a motion to amend the claims may be denied where the amendment does not respond to the ground of unpatentability involved in the trial or seeks to enlarge the scope of the claims or introduce new matter.
- Section 42.121(a) further provides that a reasonable number of substitute claims is presumed to be one substitute claim per challenged claim which may be rebutted by a demonstration of need.
- The rule aids the efficient administration of the Office and the timely completion of the review under 35 U.S.C. 316(b) and also is consistent with 35 U.S.C. 316(d)(3), as amended, which prohibits enlarging the scope of the claims or introducing new matter.
- Further, the rule is consistent with 35 U.S.C. 316(a)(9) which requires the Office to promulgate rules setting forth the standards and procedures for the patent owner to amend the patent.
Section 42.121(b) provides that a motion to amend the claims must include a claim listing, show the changes clearly, and set forth:
- (1) The support in the original disclosure of the patent for each claim that is added or amended, and
- (2) the support in an earlier filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.
Under § 42.121(c), a patent owner may request filing more than one motion to amend its claims during the course of the proceeding.
- Additional motions to amend may be permitted upon a demonstration of good cause by the patent owner or a joint request of the petitioner and the patent owner to materially advance a settlement.
- In considering whether good cause is shown, the Board will take into account how the filing of such motions would impact the timely completion of the proceeding and the additional burden placed on the petitioner.
- Specifically, belated motions to amend may cause the integrity and efficiency of the review to suffer as the petitioner may be required to devote significant time and resources on claims that are of constantly changing scope.
- Further, due to time constraints, motions to amend late in the process may not provide a petitioner a full and fair opportunity to respond to the newly presented subject matter.
- In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in § 42.121(a)(1).
- Similarly, motions to amend may be permitted upon a joint request of the petitioner and the patent owner to advance settlement where the motion does not jeopardize the ability of the Office to complete the proceeding timely.
Section 42.122: Multiple proceedings and Joinder.
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(a) Multiple proceedings. Where another matter involving the patent is before the Office, the Board may during the pendency of the inter partes review enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.
(b) Request for joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested. The time period set forth in § 42.101(b) shall not apply when the petition is accompanied by a request for joinder.
Section 42.123: Filing of supplemental information.
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(a) Motion to submit supplemental information. Once a trial has been instituted, a party may file a motion to submit supplemental information in accordance with the following requirements:
(1) A request for the authorization to file a motion to submit supplemental information is made within one month of the date the trial is instituted.
(2) The supplemental information must be relevant to a claim for which the trial has been instituted.
(b) Late submission of supplemental information. A party seeking to submit supplemental information more than one month after the date the trial is instituted, must request authorization to file a motion to submit the information. The motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.
(c) Other supplemental information. A party seeking to submit supplemental information not relevant to a claim for which the trial has been instituted must request authorization to file a motion to submit the information. The motion must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.
