42.108 Institution of inter partes review.¶
- (a) When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.
- (b) At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.
- (c) Inter partes review shall not be instituted unless the Board decides that the information presented in the petition demonstrates that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable. The Board's decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence. A petitioner may seek leave to file a reply to the preliminary response in accordance with §§ 42.23 and 42.24(c) . Any such request must make a showing of good cause.
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised, 81 FR 18750, Apr. 1, 2016, effective May 2, 2016; revised, 85 FR 79120, Dec. 9, 2020, effective Jan. 8, 2021]