Intellectual Property News -- November 2011 -- Post-Grant Review and Inter Partes Review -- New Tools from the America Invents Act


The new patent law creates two new post grant review provisions to provide administrative alternatives for parties to challenge the validity of issued patents more quickly and more cost effectively than in traditional litigation. These provisions are identified as post-grant review and inter partes review. Both are effective September 16, 2012, and will apply to any patents issued before, on, or after September 16, 2012.

There are many similarities between the two post grant review provisions. Post-grant review and inter partes review proceedings are conducted by the US Patent Office and can be initiated by petition by any non-owner of the patent. Both proceedings should be concluded within one year from filing the petition ("final determination"); however, the USPTO can extend that time up to 6 months for good cause. Unlike litigation, post-grant review and inter partes review do not start with a presumption of validity. Both post-grant review and inter partes review may be terminated by the parties through settlement prior to the final determination. If an issue related to patentability is not raised during the post-grant review or inter partes review, the parties may not subsequently assert that issue on appeal or in subsequent litigation.

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