Written by Scott McKeown, Partner at Oblon Spivak, Practice Center Contributor and author of Patents Post Grant blog.
Practical Pendency of IPR to be 18-24 Months
In promulgating the new Inter Partes Review (IPR) proceeding as part of the America Invents Act (AIA) Congress hoped to address a major criticism of inter partes patent reexamination (IPX), namely, the significant length of time necessary to conclude these proceedings.
IPX first includes an examination phase handled by patent examiners of the Central Reexamination Unit. Once the examination phase concludes, an IPX may be appealed to the Board of Patent Appeals and Interferences (BPAI). Thereafter, an IPX may be further appealed to the CAFC. This three-phase process cannot be navigated quickly. That is to say, IPXs fully contested through CAFC appeal remain pending some 6-8 years from the time of the initial request.
Pendency is an important factor for challengers considering alternatives for quickly resolving a patent dispute. Likewise courts will often cite to the significant delay of IPX as justification to deny a request to stay ongoing litigation proceedings pending a parallel IPX.
To address this problem, Congress mandated that IPR be concluded at the USPTO with in 12 months, extendable to 18 months if the Director is able to show cause for extension (§ 316 (11)). Yet, is it realistic to expect a 12 month duration?
Below is a chart showing a rough estimate of an IPR timeline
As shown in the above timeline, while the IPR stature requires that the new Patent Trial and Appeal Board (PTAB) complete the IPR in 12-18 months, there is at least a 6 month front end to the proceeding.
Click here for McKeown’s full article originally published on his Patents Post Grant blog.
Tags: America Invents Act, board of patent appeals, CAFC, central reexamination unit, inter partes patent reexamination, Inter Partes Review
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