How Long Will Inter Partes Review Really Take?
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. (more…)
Unwary Litigants to Lose USPTO Review Option Under Patent Reform
Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the important changes to inter partes patent reexamination that will become effective upon enactment of the patent reform legislation.
Patent Reform & Inter Partes Review
Last week, I discussed on Patents Post Grant some important changes to inter partes patent reexamination that will become effective immediately upon enactment of the patent reform legislation. Namely, that the standard for initiating inter partes reexamination will become stricter. The new standard is defined as: a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. This new standard replaces the current standard that requires a Substantial New Question of Patentability (SNQ), perhaps within a matter of days.
Inter Partes Review will ultimately replace inter partes patent reexamination on the one year anniversary of the enactment of the patent reform legislation. Thus, the interim standard for the last year of inter partes patent reexamination will help the USPTO prepare to transition to the new Inter Partes Review proceeding, which will use the same standard. (more…)
08.31.11 | Inter Partes Review, Patent Reform, posts, Reexamination | Stefanie Levine
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10.12.11 | America Invents Act, Inter Partes Patent Reexamination, Inter Partes Review, posts | Stefanie Levine