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BIPC.COM STRATEGIC CONSIDERATIONS OF POST ISSUANCE PATENTABILITY REVIEW: THE NEW, OLD, AND NO LONGER Presented By: Todd R. Walters, Esq. B UCHANAN, I NGERSOLL.

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Presentation on theme: "BIPC.COM STRATEGIC CONSIDERATIONS OF POST ISSUANCE PATENTABILITY REVIEW: THE NEW, OLD, AND NO LONGER Presented By: Todd R. Walters, Esq. B UCHANAN, I NGERSOLL."— Presentation transcript:

1 BIPC.COM STRATEGIC CONSIDERATIONS OF POST ISSUANCE PATENTABILITY REVIEW: THE NEW, OLD, AND NO LONGER Presented By: Todd R. Walters, Esq. B UCHANAN, I NGERSOLL & R OONEY PC 1737 King Street, Suite 500 Alexandria, VA September 25, 2012

2 The New  Post-grant review (“PGR”)  Inter partes review (“IPR”)  Derivation proceedings  Supplemental examination BIPC.COM 1

3 The Old  Reissue  Ex parte Reexamination  Interferences/Derivation proceedings (claims having an effective filing date prior to March 16, 2013) BIPC.COM 2

4 The No Longer  Inter Partes Reexamination (eliminated September 16, 2012)  Interferences (claims having an effective filing date on or after March 16, 2013) BIPC.COM 3

5 Know the Law BIPC.COM  Understanding Options for Post Grant Review Starts with Knowing the Law □Some options apply only to cases filed on or after March 16, 2013 □Other Options apply to all cases □Old Law/New Law—What standard applies? 4

6 New Prior Art Provisions Apply to Applications and Patents BIPC.COM  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,

7 New Prior Art Provisions Apply to Applications and Patents Claiming Priority BIPC.COM  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,

8 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) BIPC.COM 7

9 POST-GRANT REVIEW (PGR) 8

10 Post-Grant Review (PGR) Procedure BIPC.COM 9

11 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 could have reasonably raised during PGR BIPC.COM 10

12 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 BIPC.COM 11

13 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 BIPC.COM 12

14 Post-Grant Review (PGR) BIPC.COM 13 PGR Petition can only be filed within 9 months of issue date of patent or reissue.

15 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 BIPC.COM 14

16 BIPC.COM INTER PARTES REVIEW (IPR) 15

17 Inter Partes Review (IPR) Procedure BIPC.COM 16

18 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 BIPC.COM 17

19 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 could have reasonably raised during IPR BIPC.COM 18

20 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 BIPC.COM 19

21 Inter Partes Review (IPR) BIPC.COM 20 IPR Petition can only be filed 9 months after issue date of patent or reissue OR termination of PGR, whichever is later.

22 Inter Partes Review (IPR) BIPC.COM 21 IPR Petition must be filed within 1 year of service of Complaint alleging infringement. IPR Petition may not be filed if a civil action challenging the validity of a claim is filed.

23 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 BIPC.COM 22

24 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 BIPC.COM 23

25 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 BIPC.COM 24

26 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. BIPC.COM 25

27 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. BIPC.COM 26

28 BIPC.COM SUPPLEMENTAL EXAMINATION 27

29 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 entity status claimed) TIMING  Before patent expires GROUNDS FOR FILING  Any information relevant to patentability BIPC.COM 28

30 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 to information that had not been considered or was incorrect, if submitted or corrected during Supplemental Examination BIPC.COM 29

31 Supplemental Examination PTO FILING FEE  $5,140 EFFECT OF CONCURRENT PROCEEDING  Patent is not unenforceable on basis of information that was considered, reconsidered or corrected during Supplemental Examination APPEALS COURT  Patent Trial and Appeal Board (PTAB) BIPC.COM 30

32 Summary BIPC.COM 31 ProceedingApplicabilityEffective Date TimingThresholdEstoppelPossibility of Settlement ReissuePatent owners to correct errors in their patents HistoricBefore patent expiration date N/A Inter Partes Reexam Any third party to challenge patentability based on patents and publications 11/29/ /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 HistoricBefore patent expires or 6 months after expiration SNQNoneNo Inter Partes Review Third party to challenge patentability based on patents and publications 09/16/20129 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

33 Summary BIPC.COM 32 ProceedingApplicabilityEffective Date TimingThresholdEstoppelPossibility of Settlement Post-Grant Review Third party to challenge patentability on any ground except failure to comply with best mode requirement 09/16/2012Within 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 09/16/2012Before patent expires SNQNoneN/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/ /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

34 Summary BIPC.COM 33 ProceedingApplicabilityEffective Date TimingThresholdEstoppelPossibility of Settlement DerivationInventor to challenge patentability of an earlier application by showing that the invention was derived from the inventor of the later application 03/16/2012Within 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/AYes

35 BIPC.COM Questions? 34


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