bipc.com strategic considerations of post issuance patentability review: the new, old, and no longer...
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STRATEGIC CONSIDERATIONS OF POST ISSUANCE PATENTABILITY REVIEW:
THE NEW, OLD, AND NO LONGER
Presented By:Todd R. Walters, Esq.
BUCHANAN, INGERSOLL & ROONEY PC1737 King Street, Suite 500
Alexandria, VA [email protected]
September 25, 2012
The New
Post-grant review (“PGR”) Inter partes review (“IPR”) Derivation proceedings Supplemental examination
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The Old
Reissue Ex parte Reexamination Interferences/Derivation proceedings (claims having an
effective filing date prior to March 16, 2013)
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The No Longer
Inter Partes Reexamination(eliminated September 16, 2012)
Interferences (claims having an effective filing date on or after March 16, 2013)
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Know the Law
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Understanding Options for Post Grant Review Starts with Knowing the Law
□ Some options apply only to cases filed on or afterMarch 16, 2013
□ Other Options apply to all cases
□ Old Law/New Law—What standard applies?
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New Prior Art Provisions
Apply to Applications and Patents
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Applies to any application for patent, and to any patent issuing thereon
□ That contains or that contained at any time a claim to invention that has an effective date on or after March 16, 2013
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New Prior Art Provisions
Apply to Applications and PatentsClaiming Priority
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A specific reference under 120, 121 or 365(c) of Title 35 to any patent or application
□ That contains or that contained at any time a claim to an invention that has an effective date on or after March 16, 2013
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Filing Strategies
Informal survey suggests filing new applications prior to March 16, 2013
Most common reasons
□ AIA expands available prior art to include foreign applications as of filing date in foreign country
□ AIA expands on sale bar to activities in foreign countries
□ AIA removes swear behind options
□ AIA subjects claims to PGR (IPR available for all claims)
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POST-GRANT REVIEW(PGR)
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Post-Grant Review (PGR) Procedure
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PetitionFiled
PO PreliminaryResponse
Decisionon Petition
Petitioner Replyto PO Response& Opposition to
Amendment
PO Replyto Opposition
to Amendment
PO Resp. & Motion to
Amend ClaimsOral
HearingFinal Written
Decision*
PODiscovery
Period
PetitionerDiscovery
Period
PODiscovery
Period
Observations & Motions to
Exclude Evidence
No more than 12 months
3 monthsNo more than
3 months 3 months 3 months 1 month Hearing set
*six month extension
Post-Grant Review (PGR)
THRESHOLD More likely than not that at least one challenged claim
is unpatentable
PTO BRANCH Patent Trial and Appeal Board (PTAB)
IDENTIFICATION OF REAL PARTY IN INTEREST All Real Parties in Interest must be identified
ESTOPPEL After final PTAB decision, the Real Party in Interest (RPI) is
estopped from challenging its patent in the USPTO, ITC,or District Court on ANY ground that the RPI raised or couldhave reasonably raised during PGR
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Post-Grant Review (PGR)
WHO CAN INITIATE? Third Party
QUALIFICATION* Any patent having a claim with an effective filing
date on or after March 16, 2013
TIMING Within 9 months after issuance of patent or reissue
GROUNDS FOR FILING Any ground except failure to comply with best mode
requirement
*Business Method Patents
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Post-Grant Review (PGR)
PTO FILING FEES $35,800 Petition Fee (for up to 20 claims) $800 for each claim in excess of 20
APPEALS COURT Federal Circuit
SETTLEMENT Yes
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Post-Grant Review (PGR)
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PGR Petition can only be filed within 9 monthsof issue date of patent or reissue.
Interim Procedures for Business Method Patents
WHO CAN INITIATE? Third Party sued or charged with infringement
QUALIFICATION Only “a covered business method patent”
TIMING Only between September 16, 2012 and September 16, 2020
GROUNDS FOR FILING §§ 102/103 based on patents and publications
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INTER PARTES REVIEW(IPR)
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Inter Partes Review (IPR) Procedure
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PetitionFiled
PO PreliminaryResponse
Decisionon Petition
Petitioner Replyto PO Response& Opposition to
Amendment
PO Replyto Opposition
to Amendment
PO Resp. & Motion to
Amend ClaimsOral
HearingFinal Written
Decision*
PODiscovery
Period
PetitionerDiscovery
Period
PODiscovery
Period
Observations & Motions to
Exclude Evidence
No more than 12 months
3 monthsNo more than
3 months 3 months 3 months 1 month Hearing set
*six month extension
Inter Partes Review (IPR)
WHO CAN INITIATE? Third Party
QUALIFICATION Any patent
TIMING The later of 9 months after issuance of patent or reissue OR After termination of Post-Grant Review
GROUNDS FOR FILING §§ 102/103 based on patents and publications
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Inter Partes Review (IPR)
THRESHOLD A reasonable likelihood that the petitioner would prevail
with respect to at least one challenged claim
IDENTIFICATION OF REAL PARTY IN INTEREST All Real Parties in Interest must be identified
ESTOPPEL After final PTAB decision, the Real Party in Interest (RPI) is
estopped from challenging its patent in the USPTO, ITC,or District Court on ANY ground that the RPI raised or couldhave reasonably raised during IPR
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Inter Partes Review (IPR)
PTO FILING FEES $27,200 Petition Fee (for up to 20 claims) $600 for each claim in excess of 20
APPEALS COURT Federal Circuit
SETTLEMENT Yes
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Inter Partes Review (IPR)
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IPR Petition can only be filed 9 months after issue date of patent or reissue OR termination of PGR, whichever is later.
Inter Partes Review (IPR)
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IPR Petition must be filed within 1 year of service ofComplaint alleging infringement.
IPR Petition may not be filed if a civil action challenging the validity of a claim is filed.
Compare With Litigation
Burden of Proof□ Preponderance of Evidence vs. Clear and Convincing Evidence
Claim Construction□ Broadest Reasonable Construction vs. Construction That Upholds
Validity (file history estoppel)
Decision Maker□ Technically Trained and Familiar With Patent Law vs. Judge/Jury
Timing□ One Year (with short extension) vs. Multiple Years
Cost□ Tens of Thousands Up to Several Million vs. Several Million and Up
Discovery□ Limited vs. Broad
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Compare With Reexamination
Burden of Proof□ Preponderance of Evidence
Claim Construction□ Broadest Reasonable Construction
Decision Maker□ Panel of Three APJs vs. Examiner
Timing□ One Year (with short extension) vs. Multiple Years
Cost□ Tens of Thousands Up to Several Million vs. Tens of Thousands
Participation□ Full vs. Limited
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PGR/IPR Relationship to Civil Action
PRG/IPR barred by previously filed civil action
□ PRG/IPR Petitions barred if petitioner has already filed a civil action challenging validity of a claim of the patent
□ IPR Petition barred if filed more than one year after being served with complaint
Counterclaims
□ Do not constitute a civil action challenging the validity of a claim
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PGR/IPR Relationship to Civil Action
Civil action stayed by PRG/IPR
□ Civil action filed after PRG/IPR Petition is automatically stayed until:
A. Patent owner moves court to lift stay;
B. Patent owner files a civil action or counterclaim alleging petitioner has infringed the patent; or
C. Petitioner moves the court to dismiss the action.
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Preliminary Injunctions
If a civil action alleging infringement of a patent is filed within 3 months after the date on which the patent is granted, the court may not stay its consideration of the patent owner’s motion for a preliminary injunction on the basis of PRG.
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SUPPLEMENTAL EXAMINATION
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Supplemental Examination
WHO CAN INITIATE? Patent Owner
QUALIFICATION Any patent OR Any information believed to be relevant to the patent
(Declarations, public sale before critical date,submission of litigation papers, incorrect entitystatus claimed)
TIMING Before patent expires
GROUNDS FOR FILING Any information relevant to patentability
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Supplemental Examination
THRESHOLD Substantial new question of patentability
ESTOPPEL Patent is prevented from being held unenforceable in a
court proceeding on the basis of conduct relating toinformation that had not been considered or wasincorrect, if submitted or corrected during SupplementalExamination
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Supplemental Examination
PTO FILING FEE $5,140
EFFECT OF CONCURRENT PROCEEDING Patent is not unenforceable on basis of information
that was considered, reconsidered or correctedduring Supplemental Examination
APPEALS COURT Patent Trial and Appeal Board (PTAB)
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Summary
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Proceeding Applicability Effective Date
Timing Threshold Estoppel Possibility of Settlement
Reissue Patent owners to correct errors in their patents
Historic Before patent expiration date
N/A N/A N/A
Inter Partes Reexam
Any third party to challenge patentability based on patents and publications
11/29/1999-09/15/2012
Before patent expires or 6 months after expiration
SNQ before 09/16/2011 or after IF reasonable likelihood that petitioner would prevail on at least 1 claim
Any ground raised or could have been raised during reexamination
N/A
Ex Parte Reexam
Any person to challenge patentability based on patents and publications
Historic Before patent expires or 6 months after expiration
SNQ None No
Inter Partes Review
Third party to challenge patentability based on patents and publications
09/16/2012 9 months after issuance of patent or reissue OR after termination of PGR
Reasonable likelihood that petitioner would prevail with respect to at least 1 claim
Any ground raised or could have been reasonably raised during IPR
Yes
Summary
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Proceeding Applicability Effective Date
Timing Threshold Estoppel Possibility of Settlement
Post-Grant Review
Third party to challenge patentability on any ground except failure to comply with best mode requirement
09/16/2012 Within 9 months after issuance of patent or reissue
More likely than not that at least 1 challenged claim is unpatentable
Any ground raised or could have been reasonably raised during PGR
Yes
Supplemental Examination
Patent owner to submit information relevant to patentability
09/16/2012 Before patent expires
SNQ None N/A
PGR for business method patents
Third party to challenge patentability on patents and publications(requires petitioner to be sued for or charged with infringement of covered business method patent)
09/16/2012-09/16/2020
Before patent expiration
More likely than not that at least 1 challenged claim is unpatentable
Any ground raised or could have been reasonably raised during PGR
Yes
Summary
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Proceeding Applicability Effective Date
Timing Threshold Estoppel Possibility of Settlement
Derivation Inventor to challenge patentability of an earlier application by showing that the invention was derived from the inventor of the later application
03/16/2012 Within 1 year of publication of a claim to the derived invention
Claim same or substantially same invention within 1 year of first publication of claim
N/A Yes
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Questions?
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