First Petition for Review of a Patent under the AIA Filed Yesterday

The following provisions of the AIA became effective Sunday, September 16, 2012 at 12:01 AM, the one year anniversary of the AIA:

  • Covered Business Methods Review requested by third parties of business methods patents
  • Post-Grant Review of issued patents requested by third parties
  • Inter Partes Review of issued patents requested by third parties
  • Citation of Patent Owner Claim Scope Statements
  • Supplemental Examination by a patentee
  • Preissuance Submissions by third parties in a patent application
  • New Standards for Inventors Oath or Declaration

First Petition for Review of a Covered Business Methods Patent Filed September 16, 2012

Although expected by many to be a rare event, the first petition for review of a business methods patent was filed yesterday.  The petition was filed by a defendant in a patent infringement lawsuit that is currently on appeal.  The petition alleges invalidity under several statutory grounds, including nonpatentable subject matter, indefiniteness and lack of novelty.  If the petition is granted, the Patent Trial and Appeal Board will issue a decision within a year or at most eighteen months.  The fee for filing the petition is high - $35,800.

More Options Available to Applicants, Patent Owners and Third Parties

Now applicants, patent owners and third parties have additional means to assert positions, whether supportive or adverse, with respect to patent applications and issued patents.  For example, third parties may file a request for consideration of references in a patent application by preissuance submission provisions of the AIA or file requests for review of issued patents in post-grant review provisions of the AIA.  The impact of these provisions will be carefully watched by business owners and patent attorneys, who will weigh the benefits and risks prior to filing such requests. 

Further Developments

We will continue to keep you informed of developments in the implementation of the AIA.  Updates are regularly available on the United States Patent and Trademark Office AIA website and on our website.