Inter Partes Review
Inter Partes Review - Statutes
35 U.S.C. 311: Inter partes review
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(a) IN GENERAL.—Subject to the provisions of this chapter, 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. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review.
(b) SCOPE.—A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.
(c) FILING DEADLINE.*—A petition for inter partes review shall be filed after the later of either—
(1) the date that is 9 months after the grant of a patent; or
(2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review.
35 U.S.C. 311(a) provides that the Director will establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review.
35 U.S.C. 311(b) provides that a petitioner in an inter partes review may request to cancel as unpatentable one or more claims of a patent only on a ground that could be raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications.
35 U.S.C. 311(c) provides that a petition for inter partes review may be filed after the later of either:
- (1) The date that is nine months after the grant of a patent or issuance of a reissue of a patent; or
- (2) if a post-grant review is instituted under chapter 32 of title 35, United States Code, the date of the termination of that post-grant review.
The grounds for seeking an inter partes review will be limited compared with post-grant review.
- The grounds for seeking inter partes review are limited to issues raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications.
- In contrast, the grounds for seeking post-grant review include any ground that could be raised under 35 U.S.C. 282(b)(2) or (3).
- Such grounds for post-grant review include grounds that could be raised under 35 U.S.C. 102 or 103 including those based on prior art consisting of patents or printed publications.
- Other grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement.
35 U.S.C. 312: Petitions
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(a) REQUIREMENTS OF PETITION.—A petition filed under section 311 may be considered only if—
(1) the petition is accompanied by payment of the fee established by the Director under section 311;
(2) the petition identifies all real parties in interest;
(3) the petition identifies, in writing and with particularity, 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, including—
(A) copies of patents and printed publications that the petitioner relies upon in support of the petition; and
(B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions;
(4) the petition provides such other information as the Director may require by regulation; and
(5) the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated representative of the patent owner.
(b) PUBLIC AVAILABILITY.—As soon as practicable after the receipt of a petition under section 311, the Director shall make the petition available to the public.
35 U.S.C. 312(a) provides that a petition filed under 35 U.S.C. 311, may be considered only if certain conditions are met.
The following outline covers the conditions:
- First, the petition must be accompanied by payment of the fee established by the Director under 35 U.S.C. 311, as amended.
- Second, the petition must identify all real parties in interest.
- Third, the petition must identify, in writing and with particularity, 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, including:
- (A) Copies of patents and printed publications that the petitioner relies upon in support of the petition and
- (B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.
- Fourth, the petition must provide such other information as the Director may require by regulation.
- Fifth, the petitioner must provide copies of any of the documents required under paragraphs (2), (3), and (4) of 35 U.S.C. 312(a), as amended, to the patent owner or, if applicable, the designated representative of the patent owner.
35 U.S.C. 312(b) provides that as soon as practicable after the receipt of a petition under 35 U.S.C. 311, the Director will make the petition available to the public.
35 U.S.C. 313: Preliminary response to petition
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If an inter partes review petition is filed under section 311, the patent owner shall have the right to file a preliminary response to the petition, within a time period set by the Director, that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter.
35 U.S.C. 314: Institution of inter partes review
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(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.
(b) TIMING.—The Director shall determine whether to institute an inter partes review under this chapter pursuant to a petition filed under section 311 within 3 months after—
(1) receiving a preliminary response to the petition under section 313; or
(2) if no such preliminary response is filed, the last date on which such response may be filed.
(c) NOTICE.—The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence.
(d) NO APPEAL.—The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.
35 U.S.C. 314(a) provides that the Director may not authorize an inter partes review to be instituted, unless the Director determines that the information presented in the petition filed under 35 U.S.C. 311, and any response filed under 35 U.S.C. 313, 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.
35 U.S.C. 314(b) provides that the Director will determine whether to institute an inter partes review pursuant to a petition filed under 35 U.S.C. 311, within three months after:
- (1) Receiving a preliminary response to the petition under 35 U.S.C. 313, or
- (2) if no such preliminary response is filed, the last date on which such response may be filed.
35 U.S.C. 314(c) provides that the Director will notify the petitioner and patent owner, in writing, of the Director’s determination under 35 U.S.C. 314(a), and make the notice available to the public as soon as is practicable.
- 35 U.S.C. 314(c) also provides that the notice will include the date on which the review will commence.
35 U.S.C. 314(d) provides that the determination by the Director whether to institute an inter partes review under 35 U.S.C. 314 will be final and nonappealable.
35 U.S.C. 315: Relation to other proceedings or actions
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(a) INFRINGER’S CIVIL ACTION.—
(1) INTER PARTES REVIEW BARRED BY CIVIL ACTION.—An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.
(2) STAY OF CIVIL ACTION.—If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes review of the patent, that civil action shall be automatically stayed until either—
(A) the patent owner moves the court to lift the stay;
(B) the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or
(C) the petitioner or real party in interest moves the court to dismiss the civil action.
(3) TREATMENT OF COUNTERCLAIM.—A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection.
(b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314 .
(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a), 251, and 252, and chapter 30 , during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.
(e) ESTOPPEL.—
(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) , or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) , or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
35 U.S.C. 315(a):
- 35 U.S.C. 315(a)(1) provides that an inter partes review may not be instituted if, before the date on which the petition for review is filed, the petitioner or real party-in-interest had filed a civil action challenging the validity of a claim of the patent.
- 35 U.S.C. 315(a)(2) provides for an automatic stay of a civil action brought by the petitioner or real party-in-interest challenging the validity of a claim of the patent and filed on or after the date on which the petition for inter partes review was filed, until certain specified conditions are met.
- 35 U.S.C. 315(a)(3) provides that a counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of 35 U.S.C. 315(a).
35 U.S.C. 315(b) provides that an inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party-in-interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.
- However, the time limitation set forth in 35 U.S.C. 315(b) does not apply to a request for joinder.
35 U.S.C. 315(c) provides that if the Director institutes an inter partes review, the Director may, in the Director’s discretion, join as a party to that inter partes review any person who properly files a petition that the Director, after receiving a preliminary response or the expiration of the time for filing such a response, determines that the petition warrants the institution of an inter partes review.
35 U.S.C. 315(d) provides that, notwithstanding 35 U.S.C. 135(a), 251, and 252, and chapter 30 of title 35, United States Code, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.
35 U.S.C. 315(e):
- 35 U.S.C. 315(e)(1) provides that the petitioner in an inter partes review of a claim in a patent that results in a final written decision under 35 U.S.C. 318(a), or the real party-in-interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
- 35 U.S.C. 315(e)(2) provides for estoppel against an inter partes review petitioner, or the real party-in-interest or privy of the petitioner, in certain civil actions and certain other proceedings before the United States International Trade Commission if that inter partes review results in a final written decision under 35 U.S.C. 318(a).
35 U.S.C. 316: Conduct of inter partes review
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(a) REGULATIONS.—The Director shall prescribe regulations—
(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion;
(2) setting forth the standards for the showing of sufficient grounds to institute a review under section 314(a);
(3) establishing procedures for the submission of supplemental information after the petition is filed;
(4) establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title;
(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to—
(A) the deposition of witnesses submitting affidavits or declarations; and
(B) what is otherwise necessary in the interest of justice;
(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding;
(7) providing for protective orders governing the exchange and submission of confidential information;
(8) providing for the filing by the patent owner of a response to the petition under section 313 after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response;
(9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent;
(10) providing either party with the right to an oral hearing as part of the proceeding;
(11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 315(c);
(12) setting a time period for requesting joinder under section 315(c); and
(13) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director.
(b) CONSIDERATIONS.—In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.
(c) PATENT TRIAL AND APPEAL BOARD.—The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each inter partes review instituted under this chapter.
(d) AMENDMENT OF THE PATENT.—
(1) IN GENERAL.—During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:
(A) Cancel any challenged patent claim.
(B) For each challenged claim, propose a reasonable number of substitute claims.
(2) ADDITIONAL MOTIONS.—Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director.
(3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.
(e) EVIDENTIARY STANDARDS.—In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.
35 U.S.C. 316(a) provides that the Director will prescribe regulations:
- (1) Providing that the file of any proceeding will be made available to the public, except that any petition or document filed with the intent that it be sealed will, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion;
- (2) setting forth the standards for the showing of sufficient grounds to institute a review under 35 U.S.C. 314(a);
- (3) establishing procedures for the submission of supplemental information after the petition is filed;
- (4) establishing and governing inter partes review and the relationship of such review to other proceedings;
- (5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery will be limited to:
- (A) The deposition of witnesses submitting affidavits or declarations, and;
- (B) what is otherwise necessary in the interest of justice;
- (6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding;
- (7) providing for protective orders governing the exchange and submission of confidential information;
- (8) providing for the filing by the patent owner of a response to the petition under 35 U.S.C. 313, as amended, after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response;
- (9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under 35 U.S.C. 316(d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensure that any information submitted by the patent owner in support of any amendment entered under 35 U.S.C. 316(d) is made available to the public as part of the prosecution history of the patent;
- (10) providing either party with the right to an oral hearing as part of the proceeding;
- (11) requiring that the final determination in an inter partes review will be issued not later than one year after the date on which the Director notices the institution of a review, except that the Director may, for good cause shown, extend the one-year period by not more than six months, and may adjust the time periods in this paragraph in the case of joinder under 35 U.S.C. 315(c);
- (12) setting a time period for requesting joinder under 35 U.S.C. 315(c), as amended; and
- (13) providing the petitioner with at least one opportunity to file written comments within a time period established by the Director.
35 U.S.C. 316(b) provides that in prescribing regulations under 35 U.S.C. 316, the Director will consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to complete the proceedings timely.
35 U.S.C. 316(c) provides that the Patent Trial and Appeal Board will conduct each inter partes review instituted under chapter 31 of title 35, United States Code.
35 U.S.C. 316(d):
- 35 U.S.C. 316(d)(1) provides that during an inter partes review, the patent owner may file one motion to amend the patent in one or more of the following ways:
- (A) cancel any challenged patent claim; and
- (B) for each challenged claim, propose a reasonable number of substitute claims.
- 35 U.S.C. 316(d)(2) provides that additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to advance materially the settlement of a proceeding under 35 U.S.C. 317, or as permitted by regulations prescribed by the Director.
- 35 U.S.C. 316(d)(3) provides that an amendment under 35 U.S.C. 316(d) may not enlarge the scope of the claims of the patent or introduce new matter.
- 35 U.S.C. 316(e) provides that in an inter partes review, the petitioner has the burden of proving a proposition of unpatentability by a preponderance of the evidence.
35 U.S.C. 317: Settlement
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(a) IN GENERAL.—An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).
(b) AGREEMENTS IN WRITING.—Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.
35 U.S.C. 317(a) provides that an inter partes review will be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.
- 35 U.S.C. 317(a) also provides that if the inter partes review is terminated with respect to a petitioner under 35 U.S.C. 317, no estoppel under 35 U.S.C 315(e) will attach to the petitioner, or to the real party-in-interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review.
- 35 U.S.C. 317(a) further provides that if no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under 35 U.S.C. 318(a).
35 U.S.C. 317(b) provides that any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in the agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under 35 U.S.C. 317 will be in writing and a true copy of such agreement or understanding will be filed in the Office before the termination of the inter partes review as between the parties.
- 35 U.S.C. 317(b) also provides that, at the request of a party to the proceeding, the agreement or understanding will be treated as business confidential information, will be kept separate from the file of the involved patents, and will be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.
35 U.S.C. 318: Decision of the Board
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(a) FINAL WRITTEN DECISION.—If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).
(b) CERTIFICATE.—If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.
(c) INTERVENING RIGHTS.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review under this chapter shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under subsection (b).
(d) DATA ON LENGTH OF REVIEW.—The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each inter partes review.
35 U.S.C. 318(a) provides that if an inter partes review is instituted and not dismissed the Patent Trial and Appeal Board will issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under 35 U.S.C. 316(d).
- 35 U.S.C. 318(b) provides that if the Patent Trial and Appeal Board issues a final written decision under 35 U.S.C. 318(a) and the time for appeal has expired or any appeal has terminated, the Director will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.
- 35 U.S.C. 318(c) provides that any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review will have the same effect as that specified in 35 U.S.C. 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under 35 U.S.C. 318(b).
- 35 U.S.C. 318(d) provides that the Office will make available to the public data describing the length of time between the institution of, and the issuance of, a final written decision under 35 U.S.C. 318(a) for each inter partes review.
35 U.S.C. 319: Appeal
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A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) may appeal the decision pursuant to sections 141 through 144. Any party to the inter partes review shall have the right to be a party to the appeal.
REGULATIONS AND EFFECTIVE DATE
The AIA provides that the Director will, not later than the date that is one year after the date of the enactment of the AIA, issue regulations to carry out chapter 31 of title 35, United States Code, as amended by section 6(a) of the AIA.
The AIA provides that the amendments made by section 6(a) of the AIA will take effect upon the expiration of the one-year period beginning on the date of the enactment of the AIA, and will apply to any patent issued before, on, or after that effective date.
The AIA provides that 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 amendments made by section 6(a) of the AIA are in effect, if such number in each year equals or exceeds the number of inter partes reexaminations that are ordered in the last fiscal year ending before the effective date of the amendments made by section 6(a) of the AIA.
The AIA provides a transition provision for the granting, conduct, and termination of inter partes reexaminations on or after the effective date of the AIA.
- The Office, in a separate rulemaking, revised the rules governing inter partes reexamination to implement the transition provision that changes the standard for granting a request for inter partes reexamination, and to reflect the termination of inter partes reexamination, effective September 16, 2012.
