In 2023, Inter Partes Review procedure will become more accessible than ever before. The United States Patent and Trademark Office (USPTO) has recently announced the implementation of new changes that will make it easier for challengers to file an IPR petition. These changes will come into effect on October 1, 2023 and will include streamlining the process and reducing the cost of filing.
Overview of the new changes to Inter Partes Reviews in 2023
The updated process for IPR petitions in 2023 will include several changes, such as:
• A streamlined procedure for filing a petition, which includes providing a reduced number of copies and eliminating the need to submit many documents simultaneously.
• A shortened time frame of six months from filing to final written decision.
• Increased transparency regarding the decision to grant or deny institution of a petition.
• The ability for patent owners to submit confidential data and information during the review process.
• A revised standard that focuses on when an IPR petitioner has established a “reasonable likelihood” of success.
• A change in the process that allows a challenger to file multiple petitions against the same patent.
• The ability for patent owners to submit an initial response, which will allow them to challenge a petition before it is granted institution by the Patent Trial and Appeal Board (PTAB).
• Discretionary denials that allow PTAB panels to deny institution of a petition without providing reasons for the decision.
• The introduction of a director review process, which will allow the USPTO Director to review an administrative law judge’s (ALJ) institution decision and issue a revised opinion.
• A new procedure for filing ex partes reexaminations, as well as post-grant proceedings such as covered business method and first to invent patents.
• The ability for petitioners to challenge infringement claims under a patent by filing an IPR petition prior to the district court’s trial date.
• Interim guidance from the International Trade Commission on how it will handle parallel proceedings between district courts and the PTAB.
How will streamlining the process make filing an IPR petition easier and more accessible for challengers?
The new changes to IPR make it easier and more accessible for challengers to file a petition. The streamlined procedure will reduce the cost of filing, making it more affordable for challengers to pursue their patent challenges. Additionally, with the shortened time frame from filing to issued final written decision and increased transparency regarding decisions made by the PTAB, challengers can move through the process quickly with more certainty. Furthermore, with the introduction of a director review process and discretionary denials, challengers will have more options available to them when filing an IPR petition. Finally, the ability to challenge infringement claims prior to district court proceedings gives challengers another tool they can use if they believe a patent is invalid.
What are the benefits of increasing the amount of prior art references that can be submitted with an IPR petition?
The increased amount of prior art references that can be submitted with an IPR petition will benefit challengers in a number of ways. First, it allows challengers to provide additional evidence to support their case and increases the likelihood of success in challenging a patent’s validity. Second, it gives challengers more options when selecting the best type of prior art reference that is applicable to their patent validity challenge. Third, it allows challengers to present a more robust case when challenging a patent’s validity, which may result in the PTAB granting institution of the petition. Finally, with the increased amount of prior art references allowed by the USPTO, challengers will have more opportunities to identify potential invalidity issues, which could lead to a successful challenge of the patent.
How will the revised standard for establishing a “reasonable likelihood” of success change the process?
The revised standard for establishing a “reasonable likelihood” of success when filing an IPR petition will result in some changes to the process. First, this new standard will likely make it easier for challengers to succeed in their IPR petitions. Second, this new standard may result in more petitions being granted institution by the PTAB, thus increasing the number of IPRs that go forward to a final written decision. Finally, this revised standard may lead to an increase in successful challenges by petitioners as they will have a better chance of meeting this new standard. Taken together, these changes could lead to an increase in the number of patents that are successfully challenged via IPR and ultimately result in more invalidated patents and improve patent quality.
Tips for navigating this new landscape of Inter Partes Reviews in 2023
1. Make sure you are familiar with the new streamlined procedure for filing ex partes reexaminations as well as post-grant proceedings such as covered business method and first to invent patents.
2. Take advantage of the shorter time frame from filing to issued final written decision, increased transparency regarding decisions made by the PTAB, and director review process.
3. Utilize the increased amount of prior art references that can be submitted with an IPR petition to build a more robust case when challenging a patent’s validity.
4. Understand how the revised standard for establishing a “reasonable likelihood” of success will affect your ability to successfully challenge a patent.
5. Consult an experienced IP attorney to ensure that you are navigating the process correctly and taking advantage of all available options.
6. Stay up-to-date with any changes made by USPTO in order to remain competitive when filing IPR petitions.
Schmeiser, Olsen & Watts LLC is Here to Help
Schmeiser, Olsen & Watts LLC can help you navigate the new landscape of Inter Partes in 2023. We have IP attorneys who are knowledgeable about filing an ex parte reexamination, post-grant proceedings such as covered business method and first to invent patents, and other available options. Our firm is up-to-date on all changes made by USPTO so that your IPR petitions remain competitive and successful.