PTAB Guidance on the Statutory Time Bar to an Inter Partes Review

The Inter Partes Review (IPR) proceedings of the Patent Trial and Appeal Board (PTAB or Board) provide a mechanism to challenge validity of a patent. However, there is a statutory time bar against belatedly requesting an IPR. The Board has now rendered decisions, discussed below, clarifying when the statutory time bar exists.

APPLICABLE STATUTORY AND REGULATORY PROVISIONS

The following statutory section and regulatory sections govern statutory time bars in IPR proceedings.

35 USC 315(b) reads as follows:

(b) PATENT OWNER’S ACTION - An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).

37 CFR 42.101(b) reads as follows:

42.101 A person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent unless: ... (b) The petition requesting the proceeding is filed more than one year after the date on which the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent....