strategic considerations of post issuance patentability review: the new, old, and no longer

BIPC.COM

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

BIPC.COM

2

The Old

Reissue Ex parte Reexamination Interferences/Derivation proceedings (claims having an

effective filing date prior to March 16, 2013)

BIPC.COM

3

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

4

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 afterMarch 16, 2013

□ Other Options apply to all cases

□ Old Law/New Law—What standard applies?

5

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, 2013

6

New Prior Art Provisions

Apply to Applications and PatentsClaiming 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, 2013

7

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

8

BIPC.COM

POST-GRANT REVIEW(PGR)

9

Post-Grant Review (PGR) Procedure

BIPC.COM

10

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

BIPC.COM

11


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

12


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

13


BIPC.COM

14

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

BIPC.COM

15

BIPC.COM

INTER PARTES REVIEW(IPR)

16

Inter Partes Review (IPR) Procedure

BIPC.COM

17

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

BIPC.COM

18


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

BIPC.COM

19


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

20


BIPC.COM

21

IPR Petition can only be filed 9 months after issue date of patent or reissue OR termination of PGR, whichever is later.


BIPC.COM

22

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

BIPC.COM

23

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

24

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

25

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

26

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

27

BIPC.COM

SUPPLEMENTAL EXAMINATION

28

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

BIPC.COM

29


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

BIPC.COM

30


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)

BIPC.COM

31

Summary

BIPC.COM

32

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

BIPC.COM

33



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


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

BIPC.COM

34



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

BIPC.COM

Questions?

35

strategic considerations of post issuance patentability review: the new, old, and no longer

Documents