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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

Send questions, comments and suggestions to
grayonclaims@gmail.com

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Friday
Nov112011

Guest Article: A Critical Analysis of the Inter Partes Review Statute

Linked below is an article by Matthew A. Smith, well-known for his work in the field of reexamination, analyzing the new Inter Partes Review statute in detail.

Some of the most interesting points from the article include:

  • The estoppel provisions have changed substantially over inter partes reexamination, and may have a larger impact on co-pending litigation.  Specifically, the estoppels will attach after the PTAB decision, not after the issuance of a reexam certificate as is currently the case.  They will also attach regardless of the outcome of the inter partes review, whereas currently there is estoppel only if the requester loses in the reexamination.
  • The timing of an inter partes review will be a bit more complex than "1 year to a final decision", especially when one takes multiple co-pending proceedings into account.
  • The statute appears to be riddled with other ambiguities, such as the requirement for a "preliminary response" both before and after institution of the inter partes review, the apparent requirement for the PTO to shut down an inter partes review after it issues a PTAB-level decision, the failure to account for the fact that proceedings might only be directed to a subset of claims in a patent, and the inconsistent use of the terms "Petitioner", "Real party in interest" and "Privies of the petitioner".

A PDF version of the article can be found here.