FLASH: Don’t Forget About Those Seven Provisions of the AIA Effective September 16, 2012!

Starting on September 16th, seven important provisions of the America Invents Act (“AIA”) will take effect: inter partes review, post grant review, supplemental examination, third-party “preissuance submission,” substitute statement in lieu of the inventor’s oath/declaration, transitional program for covered business method patents, and citation of patent owner statements in a patent file. Not all of the provisions are applicable to every patent and/or patent application. So, it is important that one consults with patent counsel before taking action. Below are helpful takeaways and summaries of these key changes. More information can be found on the USPTO’s website.

Inter Partes Review

There are two important points to keep in mind here. First, inter partes review can only be requested after the 9-month window following the date of the issued patent. Second, this review can only be based on patents and printed publications. As a result, an accused infringer can only challenge novelty and non-obviousness of the invention.

A summary of the key components of inter parties review is listed below:

  • A person who is not a patent owner and has not challenged the validity of a claim in Federal Court can initiate an inter partes review.
  • All patents are eligible.
  • Petition must be filed after the later of: 9 months after patent grant or the date after any post grant review (see below).
  • Petitioner can raise patentability on 35 U.S.C. §§ 102 and 103 grounds, but only prior art consisting of patents or printed publications can be used.
  • To grant an inter partes review, a petitioner must demonstrate that there is a reasonable likelihood that she would prevail as to at least one of the challenged claims.

Post Grant Review

The important takeaway here is that a third party requester must be careful in her due diligence to present all defenses, since estoppel may preclude an accused infringer from presenting a defense during litigation. Estoppel exists for any ground that was raised or reasonably could have been raised during this review.

A summary of the components of post grant review to remember is listed below:

  • Post grant review only applies to patents issuing from first-inventor-to-file provisions of the AIA, which is not effective until March 16, 2013.
  • Similar to an inter partes review, a person who is not a patent owner and has not challenged the validity of a claim in federal court can initiate a post grant review.
  • Unlike an inter partes review, the petition must be filed on or before the 9-months after the patent grant date or issuance of a reissue.
  • The petitioner may request to cancel claims on the grounds of invalidity, which include: novelty, obviousness, written description, enablement and indefiniteness (35 U.S.C. § 282(b) paragraph 2 or 3), but not best mode.

Supplemental Examination

The important effect of this provision is that inequitable conduct may be cured even if the USPTO does not find a substantial new question of patentability. Also, the prior art that may be incorporated in this examination request includes patents, printed publications and any information concerning any ground of patentability, i.e., patent eligible subject matter, anticipation, obviousness, written description, enablement, best mode, and indefiniteness.

A listing of the key components of supplemental examination is:

  • This provision is only available to a patent owner.
  • The patent owner is asking the USPTO to consider, reconsider or correct information believed relevant to the patent.
  • Information can concern any ground of patentability and may include: patent eligible subject matter, anticipation, obviousness, written description, enablement, best mode and indefiniteness.
  • If the information raises a substantial new question of patentability, the Patent Office will order an ex parte reexamination of the patent.
  • As long as all proceedings were brought before a lawsuit, information, including reconsidered or corrected information, cannot be the basis for rendering a patent unenforceable for inequitable conduct.

Third-Party “Preissuance Submission”

An important lesson here is to make sure that the patent applicant is a participant of the agency’s e-Office Action program in order that the applicant can be notified if a third-party submission has been made.

The requirements for the third-party submission are as follows:

  • Third-party submissions may include patents, published patent applications or other publications of possible relevance to the examination of the patent application at issue.
  • Third-party submissions may be made in any nonprovisional utility, design, plant, or continuing application.
  • The submission must include a comprehensive description of the alleged relevance of each document submitted and must be submitted within a time set forth by the USPTO.
  • The submission must also have an English translation of any non-English item, a statement verifying that the submission is in accordance with the rules and a fee.
  • Third parties are not required to give a patent applicant a copy of the submission, but the USPTO will notify the applicant if the applicant is a member of the e-Office Action program.
  • Third-party submissions are not allowed in re-examination proceedings.

Substitute Statement in Lieu of Inventor’s Oath/Declaration

The key here is to make sure that the inventor’s oath/declaration contains the correct information. If the inventor refuses to cooperate or is unavailable, a substitute statement may be filed.

The requirements for an inventor’s oath/declaration and a substitute statement are as follows:

  • An inventor must state: i) he/she is an original inventor of the claimed invention; and ii) he/she authorized the filing of the patent application for the claimed invention.
  • A substitute statement may now be filed when the inventor is: i) deceased, ii) incapacitated, iii) unable to be found or iv) refuses to sign an oath/declaration.
  • The substitute statement may be filed by: i) the inventor’s legal representative, ii) the assignee, iii) a party to whom the inventor is under an obligation to assign or iv) a party who shows sufficient proprietary interest in the claimed invention.

Transitional Program for Covered Business Method Patents

This program is only available for the next eight (8) years (until September 16, 2020) and to companies that have been sued for infringement of a business method patent, where the patent does not include patents for technological inventions. This proceeding can be filed at any time, except during the period in which a post-grant review could be filed.

Citation of Patent Owner Statements in a Patent File

This provision enables a third party or the patent owner to cite statements of a 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 in the patent. This can be done at any time.

We, at Gibbons, will continue to update you on how these new AIA provisions are being implemented, and are available to provide counsel on any issues arising from these upcoming changes.

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