Comparison of Post-Grant Procedures before and under The America Invents Act

  Ex Parte Reexamination Inter Partes Reexamination Post-Grant Review Inter Partes Review
Eligible patents Any unexpired patent

Any unexpired patent granted on an application filed after November 29, 1999

Any patent having at any time a claim with an effective filing date after March 16, 2013; Director may limit number of reviews during first 4 years Any unexpired patent, unless patent is eligible for Post-Grant Review. If patent is eligible for Post-Grant Review, the patent must have been issued more than 9 months before date of petition. Director may limit number of reviews during first 4 years
Possible Requester Third party, patent owner, USPTO Director Any person who is not the patent owner Any person who is not the patent owner Any person who is not the patent owner
Requester Anonymity Can remain anonymous Real party in interest must be named Real party in interest must be named Real party in interest must be named
Third party Requester Right to Participate Limited to initial request; No right to interview Examiner Able to respond to patentee’s arguments; No right to interview Examiner May submit declarations of supporting evidence and opinions; Right to oral hearing May submit declarations of supporting evidence and opinions; Right to oral hearing
Opportunity for Discovery None None Discovery limited to evidence "directly related to factual assertions advanced by either party" Discovery limited to deposition of witnesses submitting affidavits/declarations and "what is otherwise necessary in the interest of justice"
Requester Right to terminate None None Proceeding can be terminated by settlement between the parties (unless Office has already decided the merits) Proceeding can be terminated by settlement between the parties (unless Office has already decided the merits)
Estoppel from Prior Civil Action or USPTO Proceeding
None Reexamination cannot be requested based on any issue that requester raised or could have raised in decided civil action or inter partes reexamination
No estoppel from prior civil action except declaratory judgment actions for invalidity; estopped by prior Inter Partes Review decision with respect to any ground raised or that could have been raised in prior proceeding No estoppel from prior civil action except declaratory judgment actions for invalidity; estopped by prior Post Grant Review decision with respect to any ground raised or that could have been raised in prior proceeding
Estoppel in Later proceeding None Civil actions: estoppel as to a claim that was raised or could have been raised by requester

USPTO, civil actions, ITC proceedings: estoppel as to a claim that was raised or reasonably could have been raised by petitioner for any claim that results in a final written decision

USPTO, civil actions, ITC proceedings: estoppel as to a claim that was raised or reasonably could have been raised by petitioner for any claim that results in a final written decision

Possible Bases for Request Novelty and obviousness issues only, and only on the basis of printed publications and patents and admission of claim scope by owner Novelty and obviousness issues only, and only on the basis of printed publications and patents Novelty, obviousness and requirements of 35 U.S.C. §112, first paragraph other than best mode (basis not limited to patents and printed publications) Novelty and obviousness issues only, and only on the basis of printed publications and patents
Time Limits for Making Request None (any time during enforceable life of patent) Up to September 16, 2012, but may be extended to handle excess Inter Partes Reviews After September 16, 2012 and during the 9 month window from grant; may not be instituted or maintained if petitioner has filed civil action challenging validity of claim in patent. A counterclaim challenging validity is not an action challenging validity After September 16, 2012 and after the later of 9 months from grant or termination of post-grant review proceeding; may not be instituted if request is filed more than one year after requestor is served with infringement complaint; may not be instituted or maintained if petitioner has filed civil action challenging validity. A counterclaim challenging validity is not an action challenging validity
USPTO Standard for Granting Request Substantial new question of patentability Reasonable likelihood that petitioner would prevail with respect to at least one claim More likely than not that at least one claim is unpatentable or if novel or unsettled legal question is raised Reasonable likelihood that petitioner would prevail with respect to at least one claim
Authority Adjudicating Request USPTO Director (decision made within 3 months) USPTO Director (decision not appealable) USPTO Director (decision not appealable); decision made within 3 months USPTO Director (decision not appealable); decision made within 3 months
Tribunal Adjudicating Substantive Review? Central Reexamination Unit Central Reexamination Unit Patent Trial and Appeal Board composed of Administrative Law Judges Patent Trial and Appeal Board composed of Administrative Law Judges
Average Cost for Requester About $19,000

(source: AIPLA 2011 Economic Survey)
About $128,000

(source: AIPLA 2011 Economic Survey)
Likely to be more expensive than current inter partes reexaminations, due to opportunity for limited discovery Likely to be more expensive than current inter partes reexaminations, due to opportunity for limited discovery
Estimated Time to Completion About 2 years About 3 years Final determination no later than 1 year after institution of proceeding is noticed by the Director, although an extension of up to 6 months is possible for good cause Final determination no later than 1 year after institution of proceeding is noticed by the Director, although an extension of up to 6 months is possible for good cause
Right of Appeal Only patent owner may appeal; Appeal initially goes to the Board of Patent Appeals & Interferences then directly to Federal Circuit Either party can appeal; Appeal goes initially to Board of Patent Appeals & Interferences then directly to Federal Circuit Either party can appeal; Appeal goes directly to Federal Circuit Either party can appeal; Appeal goes directly to Federal Circuit
Litigation Stays No provision for stays, but stays are not prohibited Once reexamination instituted, patent owner may obtain stay of pending litigation involving issue of patentability of any claim of patent, unless court decides that a stay would not serve interests of justice No express provision for stays, other than prohibiting the staying of preliminary injunctions in suits filed within 3 months of patent grant

No provision for stays, but stays are not prohibited