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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Older Patents Soon Subject to USPTO Inter Partes Review

Posted On: Sep. 15, 2011   By: Scott A. McKeown
ex parte reexaminationPre-1999 Patent Filings No longer Immune to Inter Partes Challenge

Back in August, I explained the import of various effective date provisions of the Leahy-Smith America Invents Act (AIA) as they relate to current and future post grant USPTO challenges.

The AIA changes the USPTO standard for initiating inter partes patent reexamination; this change will take effect upon enactment, tomorrow.

A second important date provision is the one year anniversary of enactment as it may foreclose inter partes options altogether for defendants currently involved in suits pertaining to newer patents (i.e., patents that matured from applications filed on or after November 29, 1999). For such litigants, if an inter partes proceeding is desired, action must be taken before the anniversary.

Interestingly, for those defendants that will become involved in suits pertaining to older patents (i.e., pre- ‘99 filings) after enactment, but before the anniversary, options at the USPTO will actually expand upon the one year anniversary. That is to say, defendants may choose to wait for new inter partes opportunities to challenge patents never before eligible for such scrutiny.

As previously discussed, some current defendants must be especially mindful of the one year anniversary of enactment. These are litigants served with a complaint on or before September 16, 2011, that are accused of infringing a patent that was filed as a patent application on or after November 29, 1999. These defendants will not be able to file an Inter Partes Review when it replaces inter partes reexamination on September 16, 2012. This is because the new statute precludes filings from defendants after the 12th month of litigation. So, those defendants wishing to pursue an inter partes challenge at the USPTO must file a request for inter partes reexamination before the anniversary, or lose the option altogether.  

For those defendants served with a complaint for infringement on or before September 16, 2011, that are accused of infringing a patent that was filed as a patent application before November 29, 1999, there is no inter partes patent reexamination option. This is because patents filed prior to November 29, 1999 are not eligible for such proceedings. Likewise, there can be no Inter Partes Review initiated by the defendant upon enactment due to the 12 month litigation history that will exist.

On the other hand, defendants served with a complaint after September 16, 2011, that are accused of infringing a patent that was filed as a patent before November 29, 1999, Inter Partes Review of that patent will be possible on or after the anniversary of enactment.

This is a very significant change.

In this regard Sec. 311 c (2) of the AIA provides:

(A) IN GENERAL- The amendments made by subsection (a) shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued before, on, or after that effective date.

(emphasis added)

While, ex parte patent reexamination has always been available for any enforceable patent these proceedings are typically disfavored over inter partes proceedings as being too one-sided, and historically biased in favor of patent holders. Upon the coming anniversary, many well known, commercially valuable patents that were previously immune to an inter partes USPTO challenge are likely to be tested by Inter Partes Review.

The USPTO will gradually implement Inter Partes Review over the first four years, and may limit filings to roughly 281 per year based FY 2010 filings. In view of the growing demand that is likely to be pent up by that time, there may be a significant surge in filings this time next year.

One Response to “Older Patents Soon Subject to USPTO Inter Partes Review”

  1. Paul F. Morgan says:

    Scott, I think traditional ex parte reexaminations may still have an appropriate use in some cases. They are simpler, cheaper [and without estoppel] for getting rid of nusance patents before liitigation if one has a good anticipatory prior art patent or publication. They will still presumably be in the CRU, whereas inter parte reviews will be run by the the Board and may well become subject to the kind of complex and costly special orders and proceedures that make interferences so specialized, difficult, and very expensive. Also, ex parte reexaminations can still be used by patent owners to clear up patentablity issues and/or add narrower claims, as an alternative to the [probably slow] PTO introduction of the new ex parte Supplimental reexaminations.