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Follow on Google News | Challenging A Patent Without Litigation - The New Inter Partes ReviewThe America Invents Act (AIA) has invoked significant changes to the U.S. patent system, a principal one being creation of Inter Partes Review (IPR), and concurrent elimination of the inter partes reexamination.
By: IP Law Leaders The party challenging patent validity, namely the petitioner, must submit: (1) an identification of the patent claims being challenged (with one challenged claim being sufficient); (2) a copy of the evidence used for the invalidity challenge; (3) a description of the evidence supporting the challenge; (4) payment of a requisite fee (currently $27,200 for the first 20 claims and $600 for each additional claim); (5) identification of the real party in interest; and (6) certification that the petition has been served on the patent owner. Previously, an inter partes reexamination could be filed at any time. However, the new legislation places two important limitations on the filing of an IPR petition. First, under 35 U.S.C. § 315(b), a party cannot file an IPR petition more than one year after the petitioner was served with a complaint alleging infringement of the patent at issue in the petition, though it may be extended by another 6 months for good cause. Second, under 35 U.S.C. § 315(a)(1), a party cannot file an IPR petition if it first brought a declaratory- In reference to the bases for challenging validity, the IPR is similar to the inter partes reexamination. In particular, both proceedings permit determinations of novelty and non-obviousness of a patent in light of only prior patents, published patent applications and other printed publications. Excluded is patent invalidity due to a prior commercial sale or a prior public use. Like in the inter partes reexamination, IPR also sets the legal standard as a reasonable likelihood of prevailing, termed the preponderance of evidence standard in legal parlance, and the party challenging patent validity bears the burden of proof. However, examination and appellate review is quite different as between the inter partes reexamination and IPR. In the latter, examination was performed by a panel of three examiners, with Office appellate review of the decision by the USPTO's Board, the highest USPTO legal authority. Under the new legislation, the IPR itself is an adjudicative proceeding conducted by the Board itself, newly designated the PTAB, with appeals brought directly to the Federal Circuit without federal district court review. Critics have argued that skipping the federal district courts is substantially disadvantageous to patent owners, who have traditionally enjoyed establishing their case on the merits by conducting plentiful discovery, and having a judge and jury determine invalidity. Advocates argue that while there was no discovery available under inter partes reexamination, IPR permits limited discovery, including deposition of declarants, initial disclosures, production of exhibits cited and inconsistent information, and the ability to move for additional discovery to suit the interests of justice. Contact: Cameron H. Tousi Managing Director IP Law Leaders PLLC Tel: 202-248-5410 Web: iplawleaders (dot) com Email: cameron (at) iplawleaders (dot) com ABOUT IP Law Leaders PLLC IP Law Leaders (IPLL) is a nationally recognized intellectual property boutique firm, representing leading corporations, startup companies and research associations worldwide. Quality IP representation can be affordable, and we prove it every day. End
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