There are a few additional proceedings added in by the America Invents Act (AIA) that we will discuss briefly here. These include the post grant review, inter partes review, and covered business method review.

Post grant review
Post grant review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent to determine if they are invalid.

Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition.

A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months).

The procedure for conducting post grant review will take effect on September 16, 2012, and generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.

Inter partes review
Inter partes review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under 35 U.S.C. 102 or 103, and only on the basis of prior art consisting of patents or printed publications.

The inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: 9 months after the grant of the patent or issuance of a reissue patent; or if a post grant review is instituted, the termination of the post grant review. The patent owner may file a preliminary response to the petition.

An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months).

The procedure for conducting inter partes review will take effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.

Covered business method review
The transitional program for covered business method patents (TPCBM) is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent.

TPCBM proceedings employ the standards and procedures of a post grant review, with certain exceptions.

For example, for first to invent patents only a subset of prior art is available to support the petition. Further, a person may not file a petition for a TPCBM proceeding unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or charged with infringement under the patent.

The procedure for conducting TPCBM review will take effect on September 16, 2012, but only applies to covered business method patents. The program will sunset for new TPCBM petitions on September 16, 2020.