Sep 12, 2012

Patent Reform – Changes Taking Effect September 16, 2012

The Leahy-Smith America Invents Act (herein “the AIA”) was signed into law on September 16, 2011, making several key changes to the United States Patent Code. While the AIA has already implemented several changes, more are set to come into effect on September 16, 2012 and March 16, 2013. Below are some of the most significant changes taking effect on September 16, 2012.

Preissuance Submissions by Third Parties

Any third party may submit any printed publication, including patents and patent applications, for consideration and inclusion in the record of a patent application. The submission may be made in any non-provisional utility, design, plant, or continuing application, and must include a comprehensive description of the relevance of each document submitted. Additionally, any non-English submission must include an English translation.

The timing of the third party submission is also important. The third party submission must be done before the earlier of the date a notice of allowance is given or mailed or the later of six months after the first publication of the application or the date of first rejection of any claim by the examiner. The submission of the documents requires a $180 fee for each submission of 10 or fewer documents. However, a third party may submit up to three initial documents without incurring the submission fee.

Citation of Prior Art and Written Statements

At any time during the enforceability of a patent, any person may submit to the USPTO statements made by the patent owner filed in a proceeding before a Federal court or the USPTO in which the patent owner took a position on the scope of any claim of the patent. Likewise, any person may submit patents or printed publications that have a bearing on the patentability on any claim of the patent. Such submissions must be accompanied with an explanation in writing of the pertinence of the statements and/or prior art. If the submission is done by one other than the patent owner, a copy of the submission must be served on the patent owner.

Substitute Statement in Lieu of Inventor’s Oath/Declaration

The AIA now allows an inventor’s legal representative, an assignee, a person to whom there is an obligation to assign, or a person who shows sufficient proprietary interest in a claimed invention to submit a substitute statement in lieu of an inventor’s oath or declaration. The substitute statement allows a patent application to be filed when an inventor refuses to cooperate or is unavailable (i.e., inventor is deceased, legally incapacitated, or cannot be found after diligent effort). The substitute statement must contain the statements and information required for an oath or declaration, identify the inventor with respect to whom the statement applies, identify the person executing the substitute statement and the relationship to the non-signing inventor, and identify the permitted basis as to why the inventor cannot submit an oath or declaration. However, an oath or declaration is still required for the patent to be allowed to issue.

Inter Partes Review

The inter partes review procedure will take the place of the existing inter partes reexamination procedure. Inter partes review is applicable to any live patent. The inter partes review procedure can only be requested nine (9) months after the issuance of a patent or the termination of a post-grant review. Any non-patent owner party can file a petition for the inter partes review of the patent. However, an inter partes review petition can only be initiated by a non-patent owner party that has not filed a civil action challenging the validity of a claim of the patent. Likewise, if the petitioner files a suit after an inter partes review petition has been submitted, the civil action is stayed pending the outcome of the inter partes review. Counterclaims of invalidity in civil suits are not barring events, but an inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner is served with a complaint alleging infringement of the patent.

An inter partes review petitioner may request to cancel as unpatentable one or more claims of a patent only on a ground that the claim is not novel or non-obvious, and only on the basis of prior art consisting of patents or printed publications. In addition, similar to the current inter partes reexamination procedure, the petitioner requesting an inter partes review must demonstrate that there is a reasonable likelihood that the petitioner would prevail as to at least one of the challenged claims. However, unlike the current inter partes reexamination procedure, the new inter partes review procedure allows for limited discovery. The petitioner also has the burden of proving unpatentability by a preponderance of the evidence. Further, petitioners must be diligent in presenting arguments for invalidity because petitioners cannot request or maintain an additional proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during the inter partes review and are estopped in certain civil actions and certain other proceedings if the inter partes review results in a final written decision.

The inter partes review procedure is also aimed at having a final written decision within a year after filing the petition (this is also the time frame expected for post-grant review and the transitional program for covered business method patents, before the Patent Trial and Appeal Board (formerly known as the Board of Patent Appeals and Interferences)). Another major change from the current inter partes reexamination procedure is the increase in fees: the current inter partes reexamination procedure costs $8,800, whereas the new inter partes review procedure will cost $27,200.

Post-Grant Review

Post-grant review can only be requested by non-patent owners. Similar to an inter partes review, a third party petitioner can only pursue a post-grant review if the third party has not filed a civil suit challenging the validity of any claims of the patent at issue. A petition for post-grant review must be filed within nine months after the issuance or re-issuance of the patent in question. In order for a petition to be accepted, the petitioner must show that it is more likely than not that at least one of the claims challenged is unpatentable. The petitioner has the burden to prove unpatentability by a preponderance of the evidence.

Post-grant review may be sought in more circumstances than inter partes review. The grounds for seeking post-grant review include novelty, obviousness, written description, enablement, and indefiniteness, but not best mode. In addition, a the petitioner must be careful to ensure that all possible challenges to the validity of the patent at issue are presented during post-grant review, because estoppel exists for any ground that was raised or reasonably could have been raised during the post-grant review. However, post-grant review is only available to patents issuing from applications filed on or after March 16, 2013. Therefore, it will be some time before the post-grant review procedure will be available. In addition, the post-grant review process is expensive: the fee is $35,800 to challenge up to twenty claims, and $800 for each additional claim.

Transitional Program for Covered Business Method Patents

Given the limited availability of prior art patents and printed publications related to business methods, the AIA has created the transitional program for covered business method patents. The transitional program is to be regarded as a post-grant review, employing the same standards and procedures as a post-grant review (including fees), subject to certain exceptions. Any claim of any business method patent may be challenged on the same grounds that may be presented during post-grant review. However, the transitional program applies only to business method patents. Further, the transitional program is only available to petitioners who have had a patent infringement action asserting the same patent at issue filed against them. The transitional program can only be filed at any time except during the period in which a petition for a post-grant review of the patent is available (i.e., nine months after issuance of the patent). Lastly, the transitional program is only available through Sept 16, 2020.

Supplemental Examination

Supplemental examination provides a patent owner an opportunity to cure inequitable conduct that would otherwise render a patent unenforceable. The patent owner may request the USPTO to review a patent to consider, reconsider, or correct information believed to be relevant to the patent that the patent owner failed to submit during the examination that ultimately led to the issuance of the patent. The request may address any condition for patentability. If the information presented by the patent owner raises a substantial new question of patentability, the USPTO will order the ex parte reexamination of the patent. However, this inequitable conduct immunization does not apply to allegations pled in a civil action or notice to the patentee before the date of the request for supplemental examination. The cost of the supplemental examination includes a $5,140 filing fee plus a $16,120 reexamination fee that is refunded upon the USPTO determining not to order an ex parte reexamination proceeding.

Willful Infringement and Advice of Counsel

A patent owner may no longer use the failure of an accused infringer to obtain the advice of counsel regarding any allegedly infringed patent to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.

Priority Examination

The USPTO already allows for the prioritization of examination of utility and plant patent applications with the payment of an additional fee of $4,800. Under this program, the patent application is expedited so that an allowance or final rejection is to be received within one year of the filing. Beginning September 16, 2012, patent applications for products, processes, or technologies that are deemed “important to the national economy or national competitiveness” may request a priority examination without need of the additional fee.

For more information, please contact one of the patent attorneys at Smith, Gambrell & Russell, LLP.

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