Imminent AIA Changes to Drive Significant Patent Reexamination Filings in the Near Term
In one month's time, the USPTO will simultaneously switch over to a new patent reexamination fee structure, and to a new inter partes trial model of the Patent Trial & Appeal Board (PTAB). These changes will drive a significant number of ex parte (EXP) and inter partes reexamination (IPX) requests to be filed over the next few weeks.
The short term impetus caused by the change to the fee structure is fairly straightforward to grasp. Simply stated, the EXP that can be filed today for a $2520 government filing fee, will cost $17,750 on the September 16th.
As to the change to the inter partes trial model, September 15th will be the last day for filing an IPX; this is significant for several reasons.
First, some patent challengers actually prefer the longer timeline of IPX relative to IPR. For example, for those petitioners in parallel litigation, IPX offers the ability to pressure a patentee on two fronts with little downside, aside from extra costs. Practically speaking, IPX estoppel is rarely a concern due to the significant pendency of the IPX proceeding. While it may seem counter-intuitive, the greatly accelerated path of inter partes review (IPR) gives some filers pause, especially in view of the earlier attachment of estoppel.
Further, while IPR will effectively replace IPX on September 16th, the IPR option will not exist for some petitioners. This is because 315(b) provides:
An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.
Thus, September 15th is perhaps the last chance for those petitioners involved in a mature litigation to avail themselves of a USPTO inter partes, patentability challenge. For these reasons, both the EXP and the IPX filing rates will increase significantly over the next few weeks.