By Scott A. McKeown
| October 12, 2011
Practical Pendency of IPR to be 18-24 Months
In promulgating the new Inter Partes Review (IPR) proceeding as part of the America Invents Act (AIA) Congress hoped to address a major criticism of inter partes patent reexamination (IPX), namely, the significant length of time necessary to conclude these proceedings.
IPX first includes an examination phase handled by patent examiners of the Central Reexamination Unit. Once the examination phase concludes, an IPX may be appealed to the Board of Patent Appeals and Interferences (BPAI). Thereafter, an IPX may be further appealed to the CAFC. This three-phase process cannot be navigated quickly. That is to say, IPXs fully contested through CAFC appeal remain pending some 6-8 years from the time of the initial request.
Pendency is an important factor for challengers considering alternatives for quickly resolving a patent dispute. Likewise courts will often cite to the significant delay of IPX as justification to deny a request to stay ongoing litigation proceedings pending a parallel IPX.
To address this problem, Congress mandated that IPR be concluded at the USPTO with in 12 months, extendable to 18 months if the Director is able to show cause for extension (§ 316 (11)). Yet, is it realistic to expect a 12 month duration?
Below is a chart showing a rough estimate of an IPR timeline (Click to Enlarge)
As shown in the above timeline, while the IPR stature requires that the new Patent Trial and Appeal Board (PTAB) complete the IPR in 12-18 months, there is at least a 6 month front end to the proceeding.
Upon filing a request for IPR (9/17/12 in the example), the Patentee has a right to a preliminary response (§ 313). While Rules have yet to be issued on when the response is due, it seems likely that there will be at least a two month response period, perhaps extendable by a month or more. (2 month timing used in EXP for Patent Owner Statement). Once the preliminary response is submitted (or the time has passed for such) the Office has 3 months to make a determination whether or not to proceed (§ 314 (b)). Thus, there will be a 5-6 month delay from the time of filing to an actual determination.
As shown in the chart, it is unclear whether patent examiners of the CRU will serve as gatekeepers, (akin to the staff attorney model of the ITC) or whether APJs/PTAB personnel will perform this function. In the chart the CRU is illustrated as examiners of this unit are actively applying the new IPR standard to current IPX filings.
Once granted, the PTAB has 12 months to conclude the proceeding with a written decision. The chart indicates some estimated times of the various discovery, amendment and oral proceeding milestones (to be clarified by the forthcoming Rules). As previously mentioned, the Director can extend the 12 month deadline by 6 months by a show of cause. Thus, from start to finish, (accounting for the front end) the proceeding will take 18-24 months. Thereafter, the written decision can be appealed to the CAFC.
Even with an appeal to the CAFC, the complete duration should not exceed 3 years, a significant improvement over the current 6-8 year timeline of IPX.