Each of these proceedings allows the USPTO to revisit—and possibly cancel—a patent the agency had previously allowed. In brief, IPR proceedings allow individuals to petition USPTO to assert that a granted patent is invalid in view of earlier patents or printed publications. Should the USPTO's Patent Trial and Appeal Board (PTAB) grant the petition, it will preside over the IPR and ordinarily reach a final determination, which may be appealed to the U.S. Court of Appeals for the Federal Circuit (Federal Circuit). The unexpected popularity of IPR proceedings may suggest that Congress met its objectives in providing an expedient and cost-effective means for challenging patents that the USPTO may have issued erroneously. These proceedings potentially harness the technical expertise of the USPTO, improve patent quality, are less costly than litigation, and can confirm the validity of patents that meet the statutory standards. Members of the patent community view IPRs as being "patent owner-unfriendly" and having led to "swift and numerous losses of patent rights." Some believe that IPRs have significantly eroded the confidence of innovative industry in the U.S. patent system. Under the AIA, the petitioner must demonstrate that there is a "reasonable likelihood" that he would prevail with respect to at least one claim in order for the IPR to begin. Both PGRs and IPRs operate under a trial-like procedure before a panel with at least three members. These procedures include the use of witnesses, the opportunity for limited discovery, and an oral hearing prior to a decision on the merits. S. 1390 was read twice and referred to the Committee on the Judiciary on June 21, 2017. On the other hand, during patent acquisition, the USPTO accords claim terms their "broadest reasonable interpretation." The Court observed both that the patent proprietor had the opportunity to amend claims during an IPR and that the USPTO had applied this standard for more than a century. In the 115 th Congress, the STRONGER Patents Act of 2017 would require the PTAB, in IPR and PGR proceedings, to use the same claim construction standard as the federal courts—that is to say, a construction in accordance with "the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art to which the claimed invention pertains." The STRONGER Patents Act would also require that the IPR or PGR petitioner demonstrate unpatentability "by clear and convincing evidence." Yet some stakeholders believe that, in practice, the PTAB rarely allows motions to amend claims. In addition, the petitioner asserted that IPRs violated the Seventh Amendment because juries play no role in these proceedings. §318(a), which provides that the [PTAB] in an inter partes review "shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner," require [the PTAB] to issue a final written decision as to every claim challenged by the petitioner, or does it allow [the PTAB] to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held? This possibility, which increases the cost and length of participation, may be exacerbated because current law permits one individual to file multiple IPR petitions against a single patent. Statistics with respect to IPRs also suggest that most patents in these proceedings have been subject to contemporaneous litigation.
The Leahy-Smith America Invents Act (AIA) of 2011 introduced inter partes review proceedings (IPRs) into the patent system. IPRs allow the U.S. Patent and Trademark Office (USPTO) to revisit—and possibly cancel—a patent the agency had previously allowed. Under these proceedings, any individual may petition the USPTO to assert that a granted patent is invalid in view of earlier patents or printed publications. A petitioner must demonstrate that there is a "reasonable likelihood" that he would prevail for the IPR to begin. Should the USPTO's Patent Trial and Appeal Board (PTAB) grant the petition, it will preside over a trial-like proceeding before a panel with at least three members. These procedures include the use of witnesses, the opportunity for limited discovery, and an oral hearing prior to a decision on the merits. IPRs must ordinarily be completed within one year and may result in patent claims being upheld, invalidated, or confirmed as amended.
IPR proceedings are arguably the most impactful of the numerous reforms made by the AIA. To many, their unexpected popularity suggests that Congress met its objectives in providing an expedient and cost-effective means for challenging patents that the USPTO erroneously issued. These proceedings potentially harness the technical expertise of the USPTO, improve patent quality, are less costly than litigation in the district courts, and can confirm the validity of patents that meet the statutory standards.
Others are critical of these proceedings. Many members of the patent community view IPRs as being biased against patent owners and believe that they have significantly eroded the confidence of innovative industry in the U.S. patent system. They observe that most patents involved in IPRs are also subject to litigation in the federal courts, a development that increases the expense and complexity of patent enforcement. They also believe that the prompt pace of these proceedings, as well as the possibility of multiple IPR petitions being filed against a single patent, may challenge patent owners.
Stakeholders have considered numerous possible reforms to the structure of IPR proceedings. In the 115th Congress, the STRONGER Patents Act of 2017 (S. 1390) would require the PTAB to give claim terms their ordinary meaning, in contrast to the "broadest reasonable interpretation" in keeping with USPTO rules. S. 1390 would also require that patent challengers prove invalidity by "clear and convincing" evidence, in contrast to the "preponderance of the evidence" standard that currently applies. And the bill would limit use of IPR proceedings to individuals and enterprises with a demonstrated adverse relationship to the challenged patent. S. 1390 was read twice and referred to the Committee on the Judiciary on June 21, 2017.
Other aspects of IPR law and practice remain topics of debate. Some stakeholders assert that even though the AIA provides patent proprietors with the opportunity to amend their claims during an IPR, the PTAB rarely allows them to do so. Others observe that the PTAB often initiates IPRs on a smaller number of claims than are challenged. They believe that such a "partial initiation" can create confusion about claims that were not considered by the PTAB. Some commentators express concern that the increased number of appeals from the USPTO to the Federal Circuit may be frustrating the congressional goal of providing the court with a well-rounded caseload. Critics of the PTAB also believe that IPRs violate the constitutional separation of powers principle and the Seventh Amendment right to a jury trial.