Is The Estoppel Of The New AIA Proceedings Worse Than Interference Estoppel?
The Leahy-Smith America Invents Act, Public Law 11-29 (Sept. 16, 2011) (hereinafter referred to as "the AIA") created new tools to challenge patents at the U.S. Patent and Trademark Office (hereinafter referred to as "the PTO"). These tools include the inter partes reviews, post-grant reviews, and transitional covered business method patent reviews (hereinafter referred to as "CBM reviews"), all of which have been promised to be faster and lower-cost alternatives to infringement litigation and ITC proceedings. These new proceedings have many benefits, and the public is already making some use of them. However, they come with what many perceive to be a significant drawback that has received much attention in the blogosphere. Once one of the proceedings reaches a final written determination that a claim is not unpatentable on the ground or grounds raised in that proceeding, the petitioner is forever foreclosed from making any other subsequent attack on that claim in the PTO on any ground that was raised or reasonably could have been raised in that proceeding. This is known as post-grant proceedings estoppel, and it is found in 37 CFR 42.73(d).