Chapter §22.01 Introduction

• Jurisdiction: United States

§22.01 Introduction

The America Invents Act of 2011 (AIA) implemented two very significant procedures for challenging the validity of issued patents in the USPTO rather than the federal courts: (1) inter partes review,¹ which replaced pre-AIA inter partes reexamination,² and (2) post-grant review,³ which is similar (but not identical) to European-style opposition practice.⁴ A third AIA-implemented proceeding, the "Transitional Program for Covered Business Method Patents" (TPCBM), is much more limited in scope and currently scheduled to sunset after eight years.⁵ This treatise will sometimes refer generally to these three procedures as "post-issuance" procedures.

Congress termed these proceedings adjudicative rather than examinational.⁶ In contrast to patent validity challenges in the federal courts, inter partes review and post-grant review can be initiated by anyone who is not an owner of the challenged patent. Inter partes review and post-grant review proceedings are decided in the first instance before panels of three administrative patent judges from the AIA-implemented Patent Trial and Appeal Board (PTAB) rather than a single examiner.⁷ Certain forms of pre-trial discovery, including depositions, are available.⁸ The AIA-implemented procedures are certainly less expensive than challenging a patent's validity in federal district court litigation, but they are by no means costless.⁹

Inter partes review and post-grant review share a great many procedural and administrative aspects,¹⁰ although substantively the scope of post-grant review is far broader than that of inter partes review.¹¹ On the other hand, post-grant review is available only during the nine months immediately following a patent's issuance,¹² whereas inter partes review can be sought once the nine-month window has closed and then throughout the remaining life of a patent.¹³ Each proceeding is discussed separately below.¹⁴

In June 2017, the U.S. Supreme Court raised substantial questions about the continued existence of the AIA post-issuance procedures by agreeing to review their Constitutionality. In Oil States Energy Services, LLC v. Greene's Energy Group, LLC,¹⁵ the Court granted certiorari to consider the following Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. ¹⁶

The Supreme Court heard oral argument in Oil States in November 2017.¹⁷ The Court's April 2018 decision,¹⁸ finding that the AIA-implemented post-issuance procedures are Constitutional under Article III, is examined in a separate subsection below.¹⁹

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Notes:

^[1] See infra §22.02 ("Inter Partes Review").

^[2] Pre-AIA inter partes reexamination is analyzed supra §21.05[C].

^[3] See infra §22.03 ("Post-Grant Review").

^[4] See European Patent Convention arts. 99–105 (14th ed. 2010).

^[5] See infra §22.04 ("Transitional Program for Covered Business Methods").

^[6] See H.R. Rep. No. 112-98 [House Judiciary Comm. Rep. on the America Invents Act] (June 1, 2011), at 57 (stating that the AIA "converts inter partes reexamination from an examinational to an adjudicative...