An Inter Partes Review Timeline

IPRs are trial-like proceedings conducted in front of a panel of administrative judges referred to as the Patent Trial and Appeal Board (PTAB). While IPR proceedings are directed to invalidating patent claims, they contain some features typically found in traditional patent litigation, including motions practice, expert declarations and depositions and other discovery issues.

As shown below, the IPR process is broken down into three phases: petition, discovery and hearing.

Petition Phase

Inter partes review is requested by filing a petition at the USPTO. A petition must meet certain requirements, including all of the following:

 1. Identifying the real parties in interest.

2. Identifying the claims being challenged along with explanations of grounds of unpatentability for those claims.

3. Providing a detailed explanation of the relevance of the evidence. 

4. Paying a filing fee.

The petition may also include technical declarations with evidence and opinions supporting the petitioner’s arguments.

Once a petition is filed, the patent owner has three months to submit a preliminary response. This response is optional, and the patent owner must weigh the positive and negative implications of this early filing option. At the very least, the preliminary response provides the patent owner with a chance to persuade the PTAB not to institute the IPR. Importantly, the patent owner is not allowed to submit evidence or rebuttal declarations directed to the validity challenges at this stage. 

Within six months from filing, the PTAB reviews the petition and patent owner’s preliminary response (if any). The PTAB institutes a trial if it determines that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. In its institution decision, the PTAB may narrow issues, provide initial claim constructions and provide details regarding the grounds of unpatentability that will be at issue in the proceeding.

Discovery and Hearing Phases

Upon institution, the PTAB issues a scheduling order that concludes the proceeding within 12 months. Pursuant to the scheduling order, a patent owner is granted approximately three months to take discovery of the petitioner’s supporting evidence and to file a formal response or motion to amend. The scope of document discovery is still evolving. However, depositions of declarants and, at times, other witnesses are allowed. 

The petitioner is then granted a three-month period to perform discovery on the patent owner’s supporting evidence and to file a reply brief or present arguments needed to counter a proposed amendment. A short period for motions may be provided before the oral hearing. After the oral hearing, the PTAB issues a final written decision regarding the patentability of the challenged claims. Parties involved in corresponding litigation may settle during the preceding unless the PTAB has already decided the dispute on the merits. Both the patent owner and petitioner may appeal the PTAB’s final decision to the U.S. Court of Appeals for the Federal Circuit.

Benefits of Filing an IPR

IPRs are often viewed as a strategic alternative to patent litigation for a number of reasons. First, the proceedings are much faster than any other federal court venue, with a final written decision issued within 18 months. Second, the IPR proceedings are adjudicated before a technically savvy panel at the USPTO, which understands the technology and the nuances of the patent laws. Third, the burden of proving invalidity before the USPTO is lower than the burden of proving invalidity in a federal court, making it easier to invalidate a patent. Finally, the claim construction standard at the USPTO is broader than federal court and again makes it easier to invalidate the patent.

IPR Timing Considerations and When To File

Perkins Coie lawyers help clients decide which approach for IPR is best in their unique situations. Anyone considering filing an IPR should know these important timing rules as described below.

Whether an IPR or PGR should be filed depends on the filing date of the patent being challenged. For patents filed on or after March 16, 2013 (post AIA - examined under the first to file rules), an IPR can be filed nine months after the patent issues. Specifically, PGR is the proper mechanism to use when challenging the validity of a patent within the first nine months of issuance. IPRs are only timely if filed nine months after the patent’s issuance.

On the other hand, if the patent being challenged was filed pre AIA, before March 16, 2013, an IPR can be initiated immediately following issuance since PGR is not available for these patents. 

There is one major caveat to these filing rules. Anyone sued for patent infringement must file for an IPR within one year of the lawsuit being filed. This one-year timing window raises strategic issues that must be considered by a defendant before filing the IPR. Specifically, it is necessary to evaluate whether it is more advantageous to file the IPR earlier or later in the 12-month window.

For example, filing the IPR early guarantees that the decision to institute will be rendered before the 12-month deadline, potentially giving the defendant/petitioner a chance to file a second IPR on issues initially lost or by using the PTAB’s claim construction. 

Alternatively, seeking inter partes review late in the 12-month filing time might allow a petitioner to take advantage of knowledge gained about the opposing party’s case, as it will likely have been presented already in the infringement lawsuit. 

Finally, it should be noted that parties that previously filed a declaratory judgment action against the same patent(s) are precluded from filing an IPR.

Limited Discovery and Estoppel

Third, discovery is broader than allowed under inter partes review, and it is limited to evidence directly related to facts asserted by either party. 

Finally, estoppel can be a significant barrier to success using post-grant review because of its broad and potentially severe limitations. Estoppel can be applied to any issue previously raised or that reasonably could have been raised in proceedings before the USPTO, federal district courts or the International Trade Commission (ITC).

Post-Grant Review Timeline

Like IPRs, PGRs also follow the same trial-like proceedings conducted in front of a panel of administrative judges at the USPTO. As shown below, the PGR process is broken down into the following three phases, including petition, discovery and hearing.

Petition

Post-grant review is requested by filing a petition at the USPTO. A petition must meet certain requirements. These include all of the following:

1. Identifying the real parties in interest.
2. Identifying the claims being challenged along with explanations of grounds of unpatentability for those claims.
3. Providing a detailed explanation of the relevance of the evidence.
4. Paying a filing fee. 

The petition may also include technical declarations with evidence and opinions supporting the petitioner’s arguments. Importantly, this petition must be filed within nine months of the patent’s issuance.

Once a petition is filed, the patent owner has three months to submit a preliminary response. This response is optional, and the patent owner must weigh the positive and negative implications of this early filing option. At the very least, the preliminary response provides the patent owner with a chance to persuade the PTAB not to institute the PGR. Importantly, the patent owner is not allowed to submit evidence or rebuttal declarations directed to the validity challenges at this stage. 

Within six months from filing, the PTAB reviews the petition and patent owner’s preliminary response (if any) and institutes a trial if it determines that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. In its institution decision, the PTAB may narrow issues, provide initial claim constructions and provide details regarding the grounds of unpatentability that will be at issue in the proceeding.

Discovery and Hearing Phases

Upon institution, the PTAB issues a scheduling order that concludes the proceeding within 12 months. Pursuant to the scheduling order, a patent owner is granted approximately three months to take discovery of the petitioner’s supporting evidence and to file a formal response or motion to amend. The scope of document discovery is still evolving. However, depositions of declarants and, at times, other witnesses is allowed. 

The petitioner is then granted a three-month period to perform discovery on the patent owner’s supporting evidence and to file a reply brief or present arguments needed to counter a proposed amendment. A short period for motions may be provided before the oral hearing. After the oral hearing, the PTAB issues a final written decision regarding the patentability of the challenged claims. Parties involved in corresponding litigation may settle during the proceedings unless the PTAB has already decided the dispute on the merits. Both the patent owner and petitioner may appeal the PTAB’s final decision to the U.S. Court of Appeals for the Federal Circuit.

Ex Parte Reexamination

Unlike the other post-grant procedures, ex parte reexamination is not new under the AIA and has remained largely unchanged since it was instituted in 1981. It is available to both the patent holder and a third-party petitioner—who can remain anonymous—and can be filed at any time after a patent has been issued.

This post-grant procedure can be attractive to patent holders who want to obtain a presumption of validity over patent or printed publication references that come to light after a patent is issued. For third parties, ex parte reexamination can be beneficial because it allows for the challenge of a patent without incurring any of the estoppel penalties that apply for other post-grant proceedings established by the AIA.

To amend the patent or show invalidity, the patent holder or petitioner must show that there is a substantial new question of patentability. However, the only grounds allowed to amend or show invalidity are anticipation or obviousness, and prior art usage is limited to patents and publications. There is also no discovery allowed.

The Central Reexamination Unit (CRU) of the USPTO reviews all requests for ex parte reexamination. Only the patent holder may appeal the CRU’s decision to the PTAB, and only negative PTAB decisions can be appealed to the Federal Circuit.

Reissue

Similar to the supplemental examination, a patent holder can apply for reissue to amend a patent’s claims but only if the basis for the amendment is that an error in the original application renders the patent either partly or wholly invalid or inoperative. Like ex parte reexamination, reissue is not new under the AIA.

Examples of such errors can include claims that were too broad or too narrow, claims that failed to use a particular claim type or that failed to claim a disclosed subject matter. The reissue application can use any prior art references and must identify how any errors will be addressed, either by amendment or presentation of new claims. Any application for reissue that broadens the claims must be filed within two years of the original issuance. 

The amended claims are examined in the same manner as any other patent application except that the recapture doctrine may apply and inventors must sign a reissue declaration. Appeals, continuations and divisionals can all be filed in the same manner as any other patent application, and estoppel does not apply.