On September 16, 2011, President Obama signed the America Invents Act (AIA) into law. The AIA is the most momentous change to the United States patent system since 1952. The AIA has a staged implementation: some provisions went into effect immediately while others were to take effect at future dates. A large number of the provisions will go into effect on September 16, 2012. These new provisions provide means for third parties to challenge the validity of pending and issued patents in a way much less expensive than patent litigation in a Federal District Court. These provisions are:
- pre-issuance prior art submissions by third parties;
- inter partes review of issued patents;
- post-grant review of patents;
- transitional post-grant review of covered business method patents; and
- supplemental examination.
This alert briefly discusses these changes. Both patent owners and those who believe that a patent is invalid need to be aware of these provisions.
Pre-issuance prior art submissions by third parties
Beginning on September 16, 2012, any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application. Provided the third party meets the deadlines specified in the AIA (generally, before a notice of allowance), this provision allows a third party to let the patent examiner know of prior art that should be taken into consideration in the decision whether or not to grant a patent. The third party must pay a fee to the patent office of $180 for each ten documents submitted.
Inter partes review of issued patents
Beginning on September 16, 2012, any party except a patent owner may submit a petition for inter partes review of any patent issued before, on, or after September 16, 2012. The petition may seek the cancellation of any claim of the patent only on a ground that could be raised under 35 USC §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. The petition may be filed any time after the later of either: (1) nine months after the grant of a patent or issuance of a reissue of a patent; or (2) if a post-grant review is instituted, the termination of that post-grant review. The standard for review is that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the challenged claims, and the petitioner must prove unpatentability by a preponderance of the evidence. The final rules set the base fees of an inter partes review at $27,200. The petitioner must be represented by a PTO-registered practitioner (i.e., patent attorney or patent agent).
Post-grant review of patents
Beginning September 16, 2012, any person except a patent owner may file with the patent office a petition to institute a post-grant review of the patent, requesting the patent office to cancel as unpatentable one or more claims of a patent. Unlike the inter partes review, the petition in a post-grant review may be on any ground under §§ 101, 102, 103, 112, or 251 (for reissues). The petition must be filed no later than the date that is nine months after the date of the grant of the patent. The standard for review is that the petitioner demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable and the petitioner must prove unpatentability by a preponderance of the evidence. The final rules set the base fees of a post-grant review at $35,800. The petitioner must be represented by a PTO-registered practitioner (i.e., patent attorney or patent agent). The post-grant rules apply to patents issuing from applications that are filed after March 16, 2013, when the “first inventor to file” provisions of the AIA become effective.
Transitional post-grant review of covered business method patents
As explained above, the general post-grant review rules limit the filing of a petition to nine months from the grant date of a patent. However, the AIA also implements new rules for “covered business method patents” beginning on September 16, 2012, which allow a petition to be filed any time between September 16, 2012 and September 16, 2020. The new rules for covered business method patents allow only a person who has been charged with infringement of a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service (other than technological inventions), to file a petition requesting the patent office to cancel as unpatentable one or more claims of such a covered business method patent. The petition may be brought under the same grounds as the inter partes review; however, there are certain limitations to the prior art that may be asserted. Fees for the covered business method post-grant review are the same as for the inter partes review: $35,800. The petitioner must be represented by a PTO-registered practitioner (i.e., patent attorney or patent agent). Unlike the general post-grant review, the Transitional post-grant review may be brought against any covered business method patent, not just patents filed after March 16, 2013.
Beginning September 16, 2012, a patent owner may request supplemental examination of a patent so that the Office can consider, reconsider, or correct information believed to be relevant to the patent. The patent owner may present any information believed to be relevant to the patent. The information is not limited to patents or printed publications, but instead may include information concerning any ground of patentability, i.e., patent eligible subject matter, anticipation, obviousness, written description, enablement, best mode and indefiniteness.
A request for supplemental examination must be accompanied by a total fee of $21,260, broken down as (i) a fee of $5,140 for processing and treating a request for supplemental examination; and (ii) a fee of $16,120 for ex parte reexamination ordered as a result of a supplemental examination proceeding. In addition, a request for supplemental examination must be accompanied by any applicable document size fees.
In a supplemental examination, the Office will determine whether any item of information presented in the request raises a substantial new question of patentability. The substantial new question of patentability standard is triggered when there is a substantial likelihood that a reasonable examiner would consider an item of information important in determining the patentability of the claimed invention.