Inter Partes Petitioner Estoppel Standard Basis Review (IPR)
• Person who is not the patent
owner and has not previously • Raised or reasonably could More likely than not filed a civil action challenging have raised OR the validity of a claim of the 101, 102, 103, 112, Post Grant Review Novel or unsettled legal question patent double patenting but (PGR) • Applied to subsequent important to other patents/ not best mode USPTO/district court/ITC applications • Must identify all real parties in action interest
• Person who is not the patent
owner, has not previously filed a civil action challenging the • Raised or reasonably could validity of a claim of the patent, have raised 102 and 103 based and has not been served with a Inter Partes Review on patents and complaint alleging infringement • Applied to subsequent Reasonable likelihood (IPR) printed publications of the patent more than 1 year USPTO/district court/ITC prior (exception for joinder) action
• Must identify all real parties in
interest • Must be sued or charged with infringement • Financial product or service Covered Business • Office—raised or reasonably • Excludes technological Same as PGR Same as PGR (some Method (CBM) could have raised inventions 102 differences) • Court-raised • Must identify all real parties in interest Major Differences between IPR, PGR, and CBM Proceeding Available Applicable Timing Must be completed Post Grant From patent grant to 9 within 12 months from Patent issued under Review (PGR) months after patent institution, with 6 first-inventor-to-file grant or reissue months good cause exception possible For first-inventor-to-file, from the later of: (i) 9 months after patent grant or reissue; or (ii) Inter Partes Patent issued under Must be completed within 12 the date of termination of any first-to-invent or months from institution, with Review (IPR) post grant review of the first-inventor-to-file 6 months good cause patent. exception possible For first-to-invent, available after grant or reissue (technical amendment)
Covered Must be completed within 12
Available 9/16/12 (for first- Patents issued under first-to- months from institution, with Business inventor-to-file only after PGR invent and 6 months good cause Method (CBM) not available or completed) first-inventor-to-file exception possible