The Leahy-Smith America Invents Act provides new ways to challenge issued U.S. patents — inter partes review and post-grant review. These new proceedings will take place before the newly named Patent Trial and Appeal Board of the U.S. Patent and Trademark Office (PTO) and will be decided by panels of three technically trained administrative patent judges. Inter partes and post-grant review should be potent weapons, particularly for accused patent infringers, as these proceedings will apply a lower burden of proof (preponderance of the evidence) than is applied in litigation.
Inter partes and post-grant review may dramatically reduce the cost of determining patent validity issues. The filing or grant of a petition for either form of review could stay pending patent litigation and avoid broad district court discovery that is pursued concurrently on infringement, invalidity, damages, etc. These proceedings focus on patentability issues and apply a narrower scope of authorized discovery. They also provide an expedited decision within one year or, at the discretion of the board, 18 months.
