Opposing a granted patent in the USA: post grant and inter partes review

摘要

Although contentious, interpartes administrative proceedings to oppose a granted patent have been available for a long time in Europe and other jurisdictions, similar proceedings are relatively new in the USA. Historically, a party seeking to invalidate an issued USA patent at the United States Patent and Trademark Office (PTO) was limited to filing a request for exparte reexamination (EPR). However, other than preparing an initial request for an EPR and a reply to the patent owner (if the patent owner responds to the request), such proceedings were and continue to be exparte, and thus do not permit further participation by the party seeking to invalidate the patent [i].The USA broadened the options to challenge an issued patent in 2000 by enacting a procedure called inter partes re-examination, which permitted further participation by the challenging party [2,3]. Inter partes re-examination proceedings were replaced by inter partes review (IPR) proceedings in 2012, by sweeping changes to USA patent law under the America Invents Act, and have grown in popularity since its inception. As of January 2019, a total of 9031 IPRs have been filed [4]. The grounds for challenging validity are limited for both IPRs and EPRs to anticipation and obviousness based on patents and printed publications [5]. However, in contrast to EPRs, IPRs permit a party to not only file a petition with the PTO, but also to fully participate in invalidity proceedings, including through discovery and an administrative trial.The America Invents Act also created a third alternative to challenging issued patents, post grant review (PGR). While IPRs have been widely used, PGRs are just starting to gain momentum, in part because the procedure is available only for patents with an effective filing date on or after 16 March 2013 [6]. Unlike EPRs and IPRs, a PGR must be filed within 9 months after the issuance of a patent, so a decision to file a PGR needs to be made promptly after a patent issues [7]. This article compares the differences between PGR and IPR to facilitate considerations for choosing between them.