Mandatory Notices: The Potential Real Party in Interest Trap

The AIA requires that a petition for PGR or IPR must identify “all real parties in interest.” While this requirement appears simple, practitioners should recognize that questions about the real party in interest can result in delay of a proceeding and that failure to name all of those parties may result in loss of the original filing date.

If the Board has concerns regarding the real party in interest, it may refuse to accord the petition a filing date until the issue is resolved. Such a determination will obviously delay the ultimate decision on the merits. Moreover, if the patent owner raises sufficient questions, the Board can grant discovery on this issue and allow the patent owner to submit testimonial evidence to challenge the standing of the petitioner. This too may delay the Board’s consideration of the merits of the petition.

The consequences of not naming all of the real parties in interest may not be limited to a delay in instituting the proceeding. The rules permit correcting clerical and typographical mistakes in a petition without loss of the filing date.  While a failure to name a real party in interest might result from a typographical or clerical error, the practitioner should not assume that the Board will allow correction under this rule. If the error does not fall within the clerical or typographical category, the petitioner will have to rely upon the rules allowing correction of an incomplete petition. These rules seemingly permit amending the petition to change the real party in interest. But, under those circumstances, the petition would not be accorded a filing date until the correction is made. In most cases, the later filing date would merely result in a delay in the proceedings. However, it is possible that loss of the original filing date could result in loss of rights.