The America Invents Act (AIA), also called the Leahy-Smith Act, continues to provide bases for challenging the validity of issued patents. With respect to the existing inter partes reexamination authority, the legislation provides for some significant revisions related to timing, threshold and reviewing body as discussed separately below.

Effective Dates & Limitations on Number of Reviews

As an initial matter, there are different effective dates depending on the specific revisions to Chapter 31 of title 35. Generally, the amendments to Chapter 31 are to take effect on September 16, 2012 and “shall apply to any patent issued before, on, or after that effective date.”[1] Further, the legislation gives the Patent Office the authority to impose limits on the number of inter partes reviews that may be instituted during the first 4 1-year periods that the changes are effective under certain circumstances.[2] As discussed further below, the change in the threshold for institution of a review by the Patent Office became effective as of date of enactment, September 16, 2011, for inter partes requests filed on or after this date.[3]

Time Period for Filing an Inter partes Review Request

Initially, the deadline for filing a petition for inter partes review is set forth in amended section 35 U.S.C. § 311(c) as follows:

(c) Filing Deadline - A petition for inter partes review shall be filed after the later of either--

  1. the date that is 9 months after the grant of a patent or issuance of a reissue of a patent; or
  2. if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review.

Other temporal limitations include a 1 year window to file a request for inter partes review from the date on which the petitioner is served with a complaint alleging infringement of the patent at issue.[4]

Threshold for Institution

The legislation raises the threshold for instituting an inter partes review from the existing substantial new question (SNQ) of patentability to a “show[ing] that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged.”[5] The refusal of the Patent Office to open a proceeding is not open for appeal.[6] This change is expected to reduce the number of reviews that are initiated by the Patent Office.

Relation to Other Proceedings

If the petitioner has already filed a declaratory judgment action in court seeking declaration of invalidity of the patent, this petitioner cannot seek inter partes review.[7] Similarly, if the petitioner first seeks inter partes review and then files a declaratory judgment action in court, the declaratory judgment action is stayed until: patent owner moves the court to lift the stay; patent owner files its own civil action or counterclaim alleging infringement by the petitioner or the petitioner moves the court to dismiss the civil action.[8] Counterclaims for invalidity in response to infringement actions do not invoke these provisions.[9]

The AIA also includes estoppel provisions which essentially bar a petitioner from challenging a claim on any invalidity grounds in any subsequent Patent Office, district court or ITC action if such claim was the subject of an inter partes review and the petitioner actually raised or reasonably could have the invalidity grounds in the original inter partes review.[10]

Reviewing Body at the PTO

In a change from current practice, under the AIA, inter partes review will go to a three-judge panel of the newly mandated Patent Trial and Appeal Board (PTAB).[11] This may help improve and expedite the review process. Section 316(a) provides a laundry list of areas which require the development of regulations by the Patent Office over the coming year in order to regulate the conduct of the inter partes review in accordance with the new statutes.