Six-Month Report Card: Post-Issuance Proceedings Under the AIA

Introduction -

On September 16, 2012, the U.S. Patent and Trademark Office (USPTO) implemented the provisions of the America Invents Act (AIA) to provide post-issuance patent challenge options to third parties (referred to herein as the opposition program). The opposition program includes post-grant review. inter partes review (IPR), and the Transitional Program for Covered Business Methods (covered business method review, or CBM) challenge proceedings, all held before the newly formed Patent Trial and Appeals Board (PTAB).

Post-issuance proceedings are intended to provide a streamlined alternative to litigation, with the PTAB potentially issuing final validity decisions within one year after a challenge is filed. Post-issuance proceedings may be used as a strategy to stay district court litigation, develop claim construction positions, or focus arguments on particular claims. Additionally, post-issuance proceedings may decrease potential costs to the patent challenger. Indeed, the PTAB recently limited discovery in a post-grant proceeding, explicitly noting that "discovery is limited as compared in district court" and clarifying that discovery is not available for material "likely to yield relevant, admissible evidence," but only for material that is itself relevant and admissible.

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