A third party who is not the patent owner, called a petitioner, may challenge the validity of the claims in an issued patent in an AIA proceeding before the Board. The two main types of AIA proceedings: inter partes review (IPR) and post grant review (PGR). The challenger files a brief, called a petition, setting forth the reasons why challenged claims are unpatentable . A patent owner may respond to the petition, and then the Board will determine whether to institute an AIA trial. The Board also has a third proceeding, known as a derivation proceeding, which is based on a petition filed by a patent applicant alleging that another inventor(s) named in an earlier application or patent derived the invention from an inventor or a joint inventor named in the petitioner’s application
If the Board institutes a trial, the petitioner and the patent owner will have opportunities to gather evidence and present additional briefing to the Board. The parties also may request an oral hearing before the Board. At the conclusion of the trial, the Board will issue a final written decision, determining whether the challenged claims are unpatentable (in IPRs and PGRs) and determining appropriate inventorship as between the applications and patents involved in a derivation proceeding. An unsatisfied party may seek reconsideration by the Board, the USPTO’s Director, or by a Precedential Opinions Panel at the Board, and may appeal to the U.S. Court of Appeals for the Federal Circuit.
The AIA process involves two phases: an institution phase and trial phase. The institution phase runs from the filing of a petition to the Board’s decision on institution. The trial phase involves several steps and is explained in this video: