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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.

AIA Technical Amendment Evolves

Posted On: Dec. 18, 2012   By: Scott A. McKeown
AIA technical amendmentH.R. 6621 Revised to Exclude Reissued Patents from 9 Month Post Grant Review Window

As reported earlier this month, Congress is currently considering a technical amendment to the America Invents Act (AIA). House Bill H.R. 6621 is being proposed by Congressperson Lamar Smith (R-Tx) to correct several “technical” aspects of the AIA. On the post grant side the bill proposes to eliminate the 9 month dead zone that now applies to newly issued, first to invent patents relative to their availability for Inter Partes Review (IPR).

As I pointed out when the initial draft of the bill was circulated, there was a second post grant aspect of H.R. 6621’s proposed fix that seemingly created more problems than it remedied; namely, the repeal of 35 U.S.C. § 325(f). The repeal of this section, although well intentioned, would have created unintended consequences. That is to say, repeal of 325(f) would have ensured that all —not just reissues with broader claims— would be subject to two separate PGR windows. Such would have created a significant disincentive to correct high value patents via patent reissue. This same criticism was later echoed by some of the major bar associations.

I am pleased to report this section of the bill has been dropped in the revised version of H.R. 6621. As an alternative, the current version of the bill proposes to effectively exclude all reissued patents from PGR. (revised bill here). With this revision, as well as others that eliminate some controversy over the remaining pre-GATT patent applications (i.e., submarine patents) still pending at the USPTO, I would expect the bill to move forward without incident.

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