As of March 16, 2013, the America Invents Act (AIA) has been fully implemented. Applications for patents are no longer afforded consideration based on when an invention was created. Instead, for prior art purposes, the filing date of the patent application will be critical. A limited grace period of one year exists for disclosures made by the patent applicant. Patents granted on applications that are now filed will also be subject to a range of new Patent Office trial procedures to challenge validity. Four new challenge procedures now exist.
Inter partes review (IPR), replaces the prior inter partes reexamination procedure and is available to challenge new and existing patents based on prior art publications and patents. Post-grant review (PGR) is a broader scope procedure available to challenge new patents based on applications filed after March 16, 2013. For patents that are granted under the new first to file standard, the patent will be subject to challenge on a wide range of grounds, including Section 112 enablement grounds in addition to prior art. Questions as to whether a patent was improperly “derived” from an inventor will be handled in derivation proceedings, which will replace inventorship decisions previously determined by interference proceedings.
A fourth, temporary, post-grant review proceeding is also currently available to challenge the validity of covered business method patents (CBMR) that are the subject of current or intended court litigation. CBMR procedures deal with patents on business methods that do not relate to a “technological” invention and are scheduled to sunset in eight years. At that time, the post-grant proceedings for all patent applications arising out of post-March 16, 2013 filed patent applications are likely to be in regular use.
In addition to the four new patent validity challenges proceedings, ex parte reexamination procedures continue to be available to both the patentee and patent challengers to address prior art validity issues in the Patent Office. As of September 16, 2012, patentees can also use a new supplemental review procedure to bring newly discovered prior art to the Patent Office’s attention. The Patent Office will review this additional prior art and issue a certificate indicating no new question of patentability exists or order a reexamination of the patent.
The new patent validity challenge proceedings present a new and powerful tool for those threatened with or in patent litigation. While these proceedings require the experience of skilled patent practitioners, including advance patent litigation training, the procedures present a much faster path to achieving a decision regarding the validity of a patent. The proceeding lasts approximately a year and thus is a less costly alternative to obtaining a validity determination in court. While there are major advantages to a post-grant patent challenge in the Patent Office, because a challenger will likely be required to live with the validity determination that is made, careful consideration of the case specific factors for the patent challenge must be evaluated before initiating one of these post-grant proceedings.
The availability of these various new patent validity challenge procedures is summarized below. More specifics on the considerations in deciding to employ a post-grant review trial proceeding are addressed in the article entitled What to Consider Before Using Inter Partes Review posted on the Merchant & Gould website.
Merchant & Gould’s post-grant patent professionals are dedicated to advising and asserting its clients’ rights in these new patent trial proceedings. The attorneys and technical resources at Merchant & Gould present an ideal team for handling Patent Office trial proceedings to challenge patent validity in cases that fit our clients’ circumstances. Clients and potential clients are invited to visit the firm’s post-grant patent page.
Authored by: Alan Kowalchyk of Merchant & Gould P.C.