What technical professionals need to know about the America Invents Act — Part 2
By Moris Amon

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On Sept. 19, 2011, the U.S. Congress passed the Smith-Leahy America Invents Act (AIA). This law will have a profound effect on America's technological future — and, probably, on most of the readers of this newsletter. This series of articles outlines, for the benefit of nonlawyers, the changes it brings to the U.S. patent system. The most important changes can be grouped under three categories:

Have you ever been involved in patent litigation?
  • 1. Yes
  • 2. No
  1. Redefinition of prior art and actions that bar the patentability of a claimed new invention.
  2. New administrative proceedings facilitating challenges to or defense of a patent's validity without recourse to litigation.
  3. Procedural changes to the patent application process.
This article will cover the second category. The parts of the AIA authorizing the subject proceedings went into effect on Sept. 16, 2012. However, many of the new rules apply only to patent applications filed under the first-to-file regime — i.e., after March 16, 2013. The availability of these proceedings brings the U.S. patent system in closer harmony to the systems of some important foreign jurisdictions, such as the European Patent Office, where opposition proceedings are well established.

Background: Pre-AIA Proceedings

Before the AIA, the U.S. patent system had a judicial board called the Board of Patent Appeals and Interferences (BPAI). When a patent applicant was dissatisfied with a U.S. patent examiner's repeated (at least twice) decisions to reject one or more of his patent claims, he could appeal to the BPAI. The appeal process is still available and was not changed by the AIA.

The BPAI also heard interference cases, where the conflicting claims of first invention by two or more patent owners or applicants were adjudicated. Interference proceedings are no longer available for new patent applications filed after March 16, 2013, because the date of invention is no longer relevant under the first-to-file regime. The BPAI has now been renamed the Patent Trial and Appeal Board (PTAB), and its mandate has been changed and expanded accordingly, as will be seen below.

Also before the AIA, an issued patent could be re-examined in the Patent Office at the request of a third party challenging its validity. In very brief outline, there were two kinds of re-examinations: 1) ex parte re-examination, in which the challenger could submit his request and supporting materials anonymously then withdraw from the reexamination process, and 2) since 1999, inter partes re-examination, where the challenger could participate in the process face-to-face with the patent owner. The ex parte proceeding remains available unchanged after the AIA, but the inter partes proceeding, now called inter partes review (IPR) has been significantly expanded and modified.

Inter Partes Review

Here are the main features of IPR:
  1. The PTAB (not examiners) will decide IPR petitions (i.e. whether to hear the challenge at all), conduct any ensuing review and give a final verdict.
  2. An IPR petition can be filed any time after nine months from patent issue. The nine-month delay allows time for any post-grant review (PGR) challenges first. (See below.)
  3. The verdict must be reached within one year from acceptance of petition. An extension of up to six months can be granted for good cause.
  4. An IPR petition can be filed by anyone, other than the patent owner(s), who has not sued to invalidate any patent claim in the courts in the past.
  5. The standard for granting petitions is "reasonable expectation that the petitioner will prevail," as opposed to the lower pre-AIA standard of a "substantial new question of patentability."
  6. The challenge to a claim can be based only on alleged anticipation (USC 102) or obviousness (USC 103), in turn based only on prior patents and publications.
  7. The patent owner may defend his patent by amending claims or filing responses to the challenges. There may be discovery and oral hearings, as in a court trial.
  8. A party dissatisfied with the PTAB's decision may appeal to the Court of Appeals for the Federal Circuit.
  9. Beyond this appeal, the petitioner may not raise again at the Patent Office or in the courts issues that were raised or could have been raised in the IPR. In legal parlance, this effect is called an estoppel. Moreover, the patent owner cannot take any action inconsistent with an adverse judgment. These two provisions are designed to reduce litigation.
  10. The parties may settle before judgment.
  11. There are legal sanctions for abuse of the process (e.g. to harass the patent owner.)
Post-Grant Review

As alluded in item 2 above, a different patent validity challenge proceeding is available in the first nine months after patent issue. This proceeding is called a post-grant review (PGR) and shares the preceding list of features with IPR, except for the following:
  1. The standard for granting petitions is “greater likelihood than not that at least one of the challenged claims is unpatentable.”
  2. A claim can be challenged on any grounds including novelty (USC 102), obviousness (USC 103), enablement (USC 112), indefiniteness (USC 112), or subject matter (USC 101). Therefore, the range of issues covered by PGR is much broader than IPR.
Derivation Proceedings

Patenting someone else's invention, called derivation, has always been illegal, but the AIA brings in a new formal PTAB proceeding to minimize recourse to the courts on such allegations. A derivation proceeding (DP) must be started by petition of the later-filing patent applicant whose invention was allegedly derived by the earlier-filing applicant. (If the deriving party files later, he cannot get a patent anyway, so there is no reason for a DP.)

The petition must be filed within one year of the publication of the later-filing party's patent claim, and substantially the same claim must be found in the earlier-filing party's published application. Furthermore, the petitioner must show to the PTAB how the derivation occurred and that it was unauthorized. The PTAB's decision can be appealed to the courts; the parties may resort to binding arbitration or settle.

Pre-Issuance Submissions

Even before the AIA, Patent Office regulations allowed interested third parties to submit prior art publications relevant to a pending patent application, to the examiner in charge. The purpose was to improve the thoroughness of the examiner's prior art search.

However, the time window allowed for this was restrictive: submissions had to be received within the two months following the publication of the application, but before the notice of allowance was sent. The AIA extends the former time limit to six months from publication, while maintaining the latter.

Pre-AIA law also provided for protests by third parties against pending patents on any grounds. This procedure is still allowed by the AIA. However, its usefulness was and still is limited because the protest has to be filed before the publication of the application, and therefore relies entirely on inside information of the third party.

Supplemental Examination

Under the AIA, a patent owner may request supplemental examination after the patent issues so the Patent Office can consider information relevant to patentability which had been overlooked in the original examination. This information can concern any ground of patentability: novelty (USC 102), obviousness (USC 103), enablement (USC 112), indefiniteness (USC 112) or subject matter (USC 101). However, note that this mechanism is not open to third parties, but only to patent owners.

Why would an owner want to request a supplemental examination of his perfectly valid patent? To immunize his patent against potential future validity challenges from competitors. Note that if a patent applicant becomes aware of a relevant prior art reference during the original examination, he is obliged to point it out to the examiner. Supplemental examination can deal with relevant references that the patent owner finds after issuance.

If the examiner determines a substantial new question of patentability has been raised, he will order an ex parte re-examination. (See the "Pre-AIA Proceedings" section above.)

Next Installment

Part 3 of this series will cover the new procedures regarding prioritized examinations, inventor oaths and miscellaneous procedural matters in the AIA. Some parts of the AIA are not likely to be of interest to the readers of this newsletter and will be left out.

Dr. Moris Amon is a plastics industry consultant with 35 years of research and development experience. He is now diversifying his practice into patent law.