Recently the Congressional Research Service published a report on the state of post-grant proceedings before the Patent Trial and Appeals Board (PTAB): “Inter Partes Review of Patents: Innovation Issues,” by John R. Thomas, July 26, 2017. The report analyzes of the current state of the 2011 Leahy-Smith America Invents Act (AIA) as a backdrop for proposed changes put forth in the Support Technology and Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act of 2017. Here, we discuss the report and key components of the bill regarding post-grant proceedings, particularly, inter partes reviews (IPRs).
According to the report, the AIA was Congress’ most recent attempt to provide a fair, streamlined and effective means for the public to contest the validity of issued patents. The AIA introduced three administrative review proceedings that patent challengers could use as a platform for their post grant opposition: covered business methods (CBM), post-grant review (PGR) and IPR. Each proceeds before a three-judge panel at the PTAB, and incorporates certain trial-like procedures including use of witnesses, limited discovery, oral hearings and the ability to terminate in lieu of settlement. CBMs are limited to patents that claim a “business method,” or, per the AIA: “perform[]data processing operations utilized in the practice, administration, or management of a financial product or service….” PGRs and IPRs replaced the old ex parte and inter partes reexamination procedures, respectively. PGRs enable a challenger to contest the validity of a patent under 35 U.S.C. §§101, 112, 102 and 103 grounds. In contrast, IPRs are confined to validity challenges under §§102 and 103.
