On September 16, 2012, a second round of changes to U.S. patent law goes into effect, based on the passage of the America Invents Act signed one year prior to that date. On August 14, 2012, the U.S. Patent and Trademark Office released a number of final rules packages corresponding to this second round of changes. Although the AIA largely leaves ex parte reexamination procedures untouched, the final rules cause fees for requests for ex parte reexamination to dramatically increase on September 16, 2012. Additionally, current inter partes reexamination procedure will no longer exist, but will be replaced by a dramatically different and more costly inter partes review process. Decisions regarding use of ex parte reexaminations at the current fee, and decisions regarding use of inter partes reexaminations at all, must be addressed before September 16, 2012.

As to requests for ex parte reexamination, USPTO filing costs will be greatly affected by the final rules. Currently, the government filing fee for a request for ex parte reexamination of a single patent costs $2,520. However, on September 16, 2012, this fee increases to $17,750 per request (i.e., per patent). As such, to the extent that ex parte reexamination procedures are under consideration for imminent use, it is strongly advised that any such requests are filed prior to September 16, 2012, to avoid incurring increased USPTO fees.

As to inter partes patent challenges, both costs and procedures will change. Currently, the government filing fee for a request for inter partes reexamination costs $8,800. As mentioned, on September 16 that procedure is discontinued, to be replaced by an inter partes review (IPR) proceeding that takes place before a new Patent Trial and Appeal Board (PTAB). The inter partes review proceeding has a substantially higher base filing fee of $35,800 per request for 20 or fewer claims, and increasing fees for additional claims. Additionally, the new inter partes review proceeding will have a shorter timeframe of 12-18 months, as compared to the 2-3 years of pendency typically seen in reexamination proceedings1. Additionally, under the AIA, patent infringement defendants are precluded from initiating an inter partes review proceeding more than one year after being served with the complaint. Furthermore, new discovery related provisions and estoppel issues will apply in inter partes review proceedings. Because of the various cost, timing, discovery, and estoppel considerations, it is suggested that potential patent challengers consult with an attorney now to determine whether the current inter partes reexamination or the future inter partes review proceedings should be used.

The drastic fee changes occurring on September 16, 2012, as well as differences in inter partes procedures on that date, impact current patent challenge strategies. If either an ex parte or an inter partes patent challenge is under consideration, we strongly encourage you to contact an attorney to ensure that you select both the best type of proceeding and the most optimal timing for initiating that proceeding as may apply to your circumstances.