The Post-Issuance Matters area features information about AIA provisions pertaining to proceedings to be conducted by the Patent Trial and Appeal Board (formerly the Board of Patent Appeals and Interferences), including inter partes review, post-grant review, the transitional post-grant review for covered business method patents, and derivations. The provided information will cover, inter alia, guidance documents, Notices of Proposed Rulemakings (NPRMs), Final Rulemakings (FRs), and links to Public Comments received in response to NPRMs.
Inter Partes Review
Inter partes review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting inter partes review will take effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.
- Inter Partes Review Technical Correction Final Rule (78 Fed. Reg. 17871, March 25, 2013)
- General Administrative Trial Final Rules (77 Fed. Reg. 48612, August 14, 2012)
- Trial Practice Guide (77 Fed. Reg. 48756, August 14, 2012)
- Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012)
- Proposed Rule of Practice for Trials before the PTAB (77 Fed. Reg. 6879, Feb. 9, 2012)
- Proposed Trial Practice Guide (77 Fed. Reg. 6868, Feb. 9, 2012)
- Proposed Rules for Inter Partes Review (77 Fed. Reg. 7041, February 10, 2012)
- 12 Month Implementation Timeline
- Inter Partes Review FAQs
Post Grant Review
Post grant review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition. A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting post grant review will take effect on September 16, 2012, and generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.
- General Administrative Trial Final Rules (77 Fed. Reg. 48612, August 14, 2012)
- Trial Practice Guide (77 Fed. Reg. 48756, August 14, 2012)
- Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012)
- Proposed Rule of Practice for Trials before the PTAB (77 Fed. Reg. 6879, Feb. 9, 2012)
- Proposed Trial Practice Guide (77 Fed. Reg. 6868, Feb. 9, 2012)
- Proposed Rules for Post Grant Review (77 Fed. Reg. 7060, February 10, 2012)
- 12 Month Implementation Timeline
- Post Grant Review FAQs
Transitional Program for Covered Business Method Patents
The transitional program for covered business method patents (TPCBM) is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent. TPCBM proceedings employ the standards and procedures of a post grant review, with certain exceptions. For example, for first to invent patents only a subset of prior art is available to support the petition. Further, a person may not file a petition for a TPCBM proceeding unless the person or the person's real party in interest or privy has been sued for infringement of the patent or charged with infringement under the patent. The procedure for conducting TPCBM review will take effect on September 16, 2012, but only applies to covered business method patents. The program will sunset for new TPCBM petitions on September 16, 2020.
- General Administrative Trial Final Rules (77 Fed. Reg. 48612, August 14, 2012)
- Trial Practice Guide (77 Fed. Reg. 48756, August 14, 2012)
- Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012)
- Covered Business Method and Technological Invention Definitions Final Rules (77 Fed. Reg. 48734, August 14, 2012)
- Proposed Rule of Practice for Trials before the PTAB (77 Fed. Reg. 6879, Feb. 9, 2012)
- Proposed Trial Practice Guide (77 Fed. Reg. 6868, Feb. 9, 2012)
- Proposed Rules for the Transitional Program for Covered Business Methods (77 Fed. Reg. 7080, February 10, 2012)
- Proposed Rule for the Technological Invention Definition (77 Fed. Reg. 7095, February 10, 2012)
- 12 Month Implementation Timeline
- Transitional Program for Covered Business Method Patents FAQs
Derivation Proceeding
A derivation proceeding is a new trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner's application. The procedure for derivation will take effect on March 16, 2013.
- Change to Implement Derivation Proceedings (77 Fed. Reg. 56068, Sept. 11, 2012)
- Proposed Rule of Practice for Trials before the PTAB (77 Fed. Reg. 6879, Feb. 9, 2012)
- Proposed Trial Practice Guide (77 Fed. Reg. 6868, Feb. 9, 2012)
- Proposed Rule for Derivation Proceedings (77 Fed. Reg. 7028, February 10, 2012)
- Derivation Proceeding FAQs