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The case law surrounding estoppel in inter partes reviews is still being developed, but there is some useful guidance so far, says John Isacson of Perkins Coie.
The 2011 America Invents Act (AIA) brought post-grant oppositions to the US patent system. These proceedings are referred to as inter partes review (IPR), post-grant review (PGR) and covered business method review (CBM). The desire was to create faster and less expensive alternative pathways for challenging patents using the US Patent and Trademark Office (USPTO) as the forum. The predecessor pathways of ex parte and inter partes reexamination were considered insufficient because these proceedings proved to be time-consuming and did not offer discovery.
There have been concerns that IPRs and PGRs can invite harassment of patent owners by third party petitioners through the submission of serial petitions for review. In order to prevent serial filings by petitioners, both IPRs and PGRs have estoppel provisions that pertain to subsequent actions in the USPTO, the courts and the US International Trade Commission (ITC). As a balance to the estoppel, dissatisfied IPR and PGR petitioners have a statutory right to appeal to the US Court of Appeals for the Federal Circuit under 35 USC §141(c).
Current status of the estoppels
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Estoppel, John Isacson,Perkins Coie patent, USPTO, IPRs