The Enactment of the America Invents Act Brings a Variety of Post Grant Options to U.S. Patent Law

October 2011

Published in French in a three-part article on the European Patent Law Blog:

http://europeanpatentcaselaw.blogspot.com/2011/10/la-nouvelle-loi-americaine-sur-les.html

http://europeanpatentcaselaw.blogspot.com/2011/10/la-nouvelle-loi-americaine-sur-les_05.html

http://europeanpatentcaselaw.blogspot.com/2011/10/la-nouvelle-loi-americaine-sur-les_06.html

The America Invents Act (AIA) introduces several new post grant proceedings, and also introduces changes to existing proceedings of the U.S. Patent & Trademark Office to enable both patent owners and challengers to re-visit the validity of an issued patent. This article summarizes the various post grant proceedings available at the USPTO, as modified by the AIA. The new Post Grant Review proceeding (section 3 below) may be of special interest to European readers, as it closely parallels an EPO opposition in a number of ways while differing in others.

1. Ex Parte Patent Reexamination (existing proceeding) — Available since the early 1980s,ex parte patent reexamination permits a patent owner or a third party to request the reexamination of an issued patent, at any time during the enforceability of the patent. Such a request can only be based on patents and printed publications, and is only granted if the submitted prior art raises a substantially new question of patentability (“SNQ”). Third party challengers may file such requests anonymously, and it is not uncommon to submit an expert declaration along with a request as evidence of the scope and content of the prior art at the time the underlying patent application was filed. Claims can be amended, cancelled or confirmed in patent reexamination, but claims can never be broadened.

Once granted, the challenger cannot participate in the substantive examination process of the ex parte proceeding.

The examination process is performed on an expedited basis by three examiners of a specialized reexamination group of the USPTO. There is no U.S. litigation style discovery permitted, and there can be no “continuation” after final rejection as is the norm in regular patent application prosecution. The final rejections of the claims can be appealed by the patent owner (not the third party) to the USPTO’s Board of Appeal. The entire reexamination may take several years to be completed. No legal estoppels are created by this procedure. However, practically speaking, art dismissed by the USPTO would be unlikely to have much value in a later proceeding (such as in a litigation).

Ex parte patent reexamination practice remains largely unchanged by the AIA. The only change clarifies that an appeal from the Board of Appeals by the patent owner can only be brought to the Court of Appeals of the Federal Circuit (CAFC). This change is effective immediately.

2. Inter Partes Patent Reexamination (existing proceeding) — An inter partes reexamination permits a third party to request the reexamination of an issued patent from a post November 29, 1999 application. The request can be filed at any time during the enforceability of the patent. Such a request can only be based on patents and printed publications, and prior to the AIA was only granted if the submitted prior art raised a substantially new question (“SNQ”) of patentability. Expert declarations are commonly submitted by both the patentee and challenger throughout the proceeding.

The third party requester cannot be anonymous, and actively participates beyond the initial request. Like the ex parte proceeding, there is no discovery and claims cannot be broadened. The procedure takes place in front of three examiners who are part of the Central Reexamination Unit (CRU), whose final rejections of the claims can be appealed by the third party or by the patent owner to the USPTO’s Board of Appeal. The entire inter partes reexamination may take several years to be completed.

Unlike ex parte patent reexamination, estoppels are created by inter partes reexamination for any ground that was raised or reasonably could have been raised, but only after all appeals have been exhausted. Defendants who have been sued on patents often seek an inter partes reexamination in an effort to delay the litigation, or to escape infringement and reduce past damages by a narrowing amendments to the claims presented during reexamination.

The AIA replaces the SNQ standard with a new standard, namely a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. This change is effective immediately.

Inter Partes patent reexaminationwill be phased out on September 16, 2012 in favor of a new proceeding, discussed below, inter partes review. As the adoption of the new proceeding brings with it new limitations on seeking USPTO review during parallel litigation, current defendants should consider the option of requesting an inter partes reexamination prior to September 16, 2012, or request instead an inter partes review after that date. Moreover, defendants that are sued on older patents (pre November 29, 1999), which are not eligible for an inter partes reexamination may be better served waiting for September 16, 2012 so that these patents may be attacked with an inter partes review.

3. Post Grant Review (new proceeding)– The AIA introduces this new proceeding that resembles an EPO opposition in certain ways. A third party will be able to request a post grant review (PGR) of an issued patent, during the 9-month window following the issue date of the patent (and before any declaratory judgment of invalidity filed by the requester). Patents eligible for this proceeding must have an effective filing date (earliest priority date) on or after March 16, 2013, such that use of this proceeding will slowly ramp up over time.

In contrast to an EPO opposition, the real-party-in-interest of the PGR must be identified. The request can be based on all grounds on invalidity (except failure to disclose the best mode). In other words, the third party can challenge the novelty, non-obviousness, sufficiency of the description, patentability eligibility. Novelty and non-obviousness can be challenged based on patents and publications, as well as evidence of public use, on sale or other forms of public disclosure. However, requests are not automatically granted. Instead, the request must establish that it is “more likely than not that at least one of the claims challenged is unpatentable,” or that a novel or unsettled legal question that is important to other patents or patent applications is raised.

The proceeding will take place in front of three administrative patent judges from the Patent Trial and Appeals Board (PTAB), which replaces the Board of Patent Appeals and Interferences (BPAI). These judges are not patent examiners (although they may have been in the past), but instead only handle post grant patent proceedings and appeals from patent prosecution. They are experienced patent law judges. The PTAB will allow for limited discovery, settlement, oral hearings, protective orders and many litigation style mechanics. The PGR will proceed as a litigation, by filing motions and culminating with the oral hearing, and the administrative judges’ decision to follow. Only a single opportunity to amend claims is provided. The duration of a PGR is fixed to between 12 and 18 months of the grant of the request. Both parties can appeal the PTAB’s decision to the CAFC.

One important aspect of the new PGR is the estoppel effect. Estoppel exists for any ground that was raised or reasonably could have been raised during PGR. This rule is similar to the one already in effect for inter partes reexamination, with one important difference. Since the available grounds for requesting a PGR are all grounds of invalidity, that would otherwise be available in litigation, an estoppel could preclude an accused infringer to raise any invalidity defense during litigation. In poker terminology, a third party is “all in” during the PGR.

The main consequence of this estoppel effect is that third party requester must do their homework before filing a request for PGR to present all reasonably available defenses.

4. Inter Partes Review (new proceeding) –Starting September 16, 2012,inter partes reviews will replace inter partes reexaminations. The new proceeding will be gradually implemented so as to not overwhelm the USPTO. As such, there will be a limit of 281 proceedings, per year, until 2016. This proceeding, which will take place in front of the PTAB, will be available for any patent issued, before, on, or after September 16, 2012. An inter partes review shares many features with a PGR, with two important distinctions.

First, an inter partes review can only be requested after the 9-month window following the issue date of the patent. This prohibition effectively prohibits the simultaneous use of PGR with this proceeding. The request must also be filed within one year after service of an infringement complaint or before the third party requester filed a court action alleging invalidity. This provision is designed to avoid wasting USPTO resources on a patent that is relatively further along in a parallel litigation proceeding.

Second, the new proceeding can only be based on patents and printed publications. While this rule limits their scope, it also limits the estoppel affect. In other words, while the accused infringer, who had previously requested an inter partes review, may not raise during litigation an invalidity defense based on patents and printed publications, the accused infringer can still challenge the novelty and non-obviousness of the invention based on evidence of public use or sale, and based on an insufficient disclosure or patentability ineligibility.

5. Supplemental Examination (new proceeding) — The AIA provides this new proceeding for patent owners in order to cure inequitable conduct before the USPTO and to avoid unenforceability of a patent by consideration, reconsideration or correcting information relevant to the patent. The supplemental reexamination is ordered if a substantial new question of patentability is found to exist. Note that the goal of curing inequitable conduct may be achieved even if the USPTO does not find an SNQ. The prior art to be considered for this proceeding is not limited to patents and printed publications and includes undisclosed material information. Patent owners can use this procedure to cure false statements or misrepresentations, for example made in the specification, declarations or responses to Office Actions.

A supplemental examination will follow the procedures for ex parte reexamination with some modification. This new proceeding will become available on September 16, 2012.

6. Reissue (existing procedure) – A reissue application permits a patent owner to correct an error in an issued patent. A typical “error” correctable by reissue is the failure to claim the full scope of the invention. If filed within two years of the patent issue date, the claims can be broadened. Otherwise, the claims can only be narrowed, perhaps in an effort to distinguish the claims over newly discovered prior art. In either case, new claims can be added. Other correctable errors include inaccuracies in the specification, or the failure to claim foreign priority.

The AIA does not change any of these basic features of reissue applications. In a pre-AIA reissue, however, the error must have occurred “without any deceptive intention.” The AIA deletes this requirement from the law, effective September 16, 2012. The major impact of this change is the removal of a defense relied upon by accused infringers who would attempt to show an intentional wrongdoing on the part of the patent owner. This change is consistent with other provisions of the AIA, which aim at reducing the number of subjective questions, e.g., based on a party’s intent, from litigation in the hope of reducing litigation uncertainty and cost.

7. Derivation (new proceeding) — This proceeding is established to combat the unscrupulous filing of a first patent application, that is derived from the work of another applicant (later filed), without authorization. This law will become effective on March 16, 2013

8. Patent Interferences (existing proceeding, ending) – The AIA has switched to a first inventor to file system. Patent Interferences will eventually cease to exist going forward, but can still be commenced up to September 16, 2012.

9. Transitional Program for Business Method Patents (new proceeding)– This proceeding was created as a result of intense lobbying by certain banks that were sued for patent infringement. It is only available for companies that have been sued for infringement of a business method patent that are not for “a technological invention.” This proceeding will be available on September 16, 2012, but only for the next eight years.