On 16 September 2012, one year on from the enactment of the America Invents Act, some sweeping changes to the US patent system resulting from that Act will take effect, including in particular those discussed below.

Changes to Third Party Submissions on US Patent Applications

Under the current provisions, a party can file a third party submission to draw the attention of the United States Patent and Trademark Office (USPTO) to particular prior art which that party believes is relevant to the patentability of one or more claims of a pending patent application. However, the third party cannot comment on the relevance of the prior art.  Under the new provisions, a third party submission (which may concern a utility, design or plant patent application) can, and indeed must, be accompanied by a short but comprehensive outline of the alleged relevance of the prior art.

Changes to Challenging Patents at the United States Patent and Trademark Office

At present, a party wishing to challenge a US patent within the USPTO must request ex partes or inter partes  re-examination.  The latter will now be replaced by two alternative forms of “review”, namely Inter Partes Review (IPR) and Post-Grant Review (PGR) which will provide routes for challenging patents which are faster and less expensive than litigation.

IPR can be sought in respect of a patent regardless of its priority date, but onlynine months or moreafter it is granted or any PGR proceeding in respect of it has concluded.  PGR can only be sought within nine months following issuance of the patent and will, to start with, only be available for business method patents. It will become available for other (non-business method) patents with a priority date of 16 March 2013 or later.  IPR grounds of invalidity are generally restricted to novelty and obviousness in the light of patents and printed publications, whereas PGR can be based on any of the grounds of invalidity that can be asserted in patent litigation, including  prior public use or sale of the claimed invention, lack of enablement and claim indefiniteness.  IPR can proceed provided the USPTO is satisfied there is a reasonable likelihood [the challenger] will prevail whereas PGR can only proceed if it is more likely than not that at least one claim is invalid or there is an important new or unsettled legal question.

Both forms of review have a 12- to 18-month duration and have significant estoppel ramifications for the challenger in that, assuming the parties do not settle, the challenger cannot, in any later USPTO proceeding or district court action, challenge on any ground that it raised, orreasonably could have raised, during the review.

Supplemental Examination to Rule Out Inequitable Conduct

A US patent applicant and its agent must, up until grant, disclose to the USPTO all prior art known to them which is considered material to patentability; where there has been a failure to do so the patent is at risk of being unenforceable on the grounds that the failure constituted inequitable conduct (IC).  The only means of redress has been to subject the patent claim(s) to examination (again), which is often undesirable, particularly given that the prior art in question is often not particularly relevant and is to be disclosed merely as a precaution.  The new supplemental examination process offers a simpler, quicker and generally more secure remedy.  Provided the USPTO is satisfied, at the conclusion of supplemental examination  (which must be reached within three months), that the prior art does not raise a substantial new question of patentability, the patent cannot thereafter be held unenforceable, in light of that prior art, on IC grounds.  If the USPTO finds that the prior art does raise such a question, it will order re-examination of the patent claim(s).

Supplemental examination can be invoked even where there has been a deliberate omission to disclose the prior art, though if that omission is found to constitute material fraud criminal charges can result. Supplemental examination cannot be invoked to remedy pre-existing IC allegations or to shut out IC assertions made as a defence in enforcement proceedings if they are raised before the conclusion of supplemental examination or a re-examination resulting from it.

Inventor’s Oath/Declarations

To date, only in very limited circumstances could a patent applicant be anyone other than an inventor.  In future, any juristic entity (such as a company) to which an inventor has assigned or is obliged to assign rights in the invention, or which otherwise has sufficient proprietary interest in the invention, can initiate and progress a US patent application as a patent applicant.  The changes in this regard allow for the submission of a streamlined form of inventor oath/declaration, a statement in lieu of such an oath/declaration in particular circumstances (including where an inventor refuses or is unavailable to make the oath/declaration), the filing the oath/declaration to be postponed until the application is otherwise allowable, and assignments containing oath or declaration statements