1US PatentDispute Overview

Dealing with disputes in the United States

2、 US Patent Invalidation Procedure

（1） USPTO Invalid Program Type

Unilateral review, authorized review, multi-party review, and business method authorized review (expired as of 15th, 2020)

（2） Unilateral Review Procedure (EPR)

Refers to the process of re examination of approved patents with only one party involved.

It can be filed by anyone (third party, patentee, USPTO) at any time after patent approval or during the validity period of the patent.

The form of evidence is limited to publicly available patents or published literature.

The reasons for challenging the validity of patents are limited to novelty issues as stipulated in Article 102 of the bill and creativity issues as stipulated in Article 103.

Features:

1. Anyone can make a proposal without any restrictions on the subject being proposed.

2. Although it can be raised by anyone, the requester's participation in the entire trial process is extremely low and they do not participate in the substantive trial process.

（3） The difference between post authorization review (PGR) and multi-party review (IPR)

（4） Overview of Post Authorization Review (PGR) and Multi party Review (IPR)

3、 Introduction to Special Regulations

（1） Forbidden speech

1. AIA Article 315

If USPTO makes a final decision on PGR/IPR, the applicant, all parties with genuine interests, and those related to the applicant's interests cannot file an invalidation request against USPTO for the same claims, based on the invalidity reasons that the applicant has already raised or could have reasonably pointed out.

2. Scope of application

USPTO's Invalid Program

Invalid Procedure of the Court

Invalid Procedure of the International Trade Commission

3. When making a request, it is necessary to specify the parties with genuine interests involved.

4. If the program stops without making a final decision, it is not subject to the principle of estoppel.

（2） Filing review

1. Judgment criteria

IPR: The information presented in the request and the response submitted by the patentee in response to the request indicate that the requester has a reasonable possibility of gaining an advantage in the dispute over at least one claim

PGR: There is a high likelihood that at least one claim will be invalidated, which is an important new legal issue for other patents or patent applications

2. Conclusion of case filing

IPR: Integrity

PGR: Optional section

3. Time

If the patentee fails to submit a response to the request within 3 months after receiving the patent, within 3 months from the day after the submission deadline

4. Not appealable

The decision to file or not to file is final and non appealable

（3） Modification of claims

1. Opportunity for amending a claim once

Cancel any challenged claims

PGR: Propose an alternative claim for any challenged claim

IPR: Propose a reasonable number of alternative claims for any challenged claim

2. If both parties agree, in order to further promote the settlement of disputes, the patentee may propose more modifications

3. Any modification shall not expand the scope of the claims or introduce new content

4. Final Decision ->Certificate of Reexamination

Revoke all claims

Confirm all claims

Authorized amended claims and revoked claims deemed invalid

4、 Apply analysis

（1） Overview of Ineffective Ways and Remedies

（2） The difference between PTAB, court, and ITC

（3） The advantages of PTAB-IPR program

1. A patent administrative judge with rich professional knowledge

2. Faster compared to the court (12-18 months to complete the case)

3. Relatively low cost

4. Not based on 'presumed validity'

5. Principle of advantageous evidence

6. Possible reconciliation advantages

7. Potential Suspension of Federal District Court Cases

（4） Key considerations for the application of PTAB-IPR program

1. The principle of estoppel

2. Limitations of Invalid Reasons

3. Limitations of Evidence Form

4. The urgency of filing an IPR during litigation

5. High quality requirements for application documents

6. Requesters have relatively few opportunities to express their opinions

7. Judgments usually lag behind ITC rulings, and the impact of invalid conclusions is yet to be determined