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Post Grant Dead Zone Eliminated by Enactment of AIA Technical Amendment
Posted On: Jan. 15, 2013
By: Scott A. McKeown
President Enacts AIA Technical Fix into Law
As reported yesterday by Politico, the President signed a series of bills into law, including H.R. 6621. As a reminder, Congressperson Lamar Smith (R-Tx) sponsored H.R. 6621 to correct several “technical” aspects of the America Invents Act (AIA). The primary technical correction of the Bill is the elimination of the 9 month dead zone that was inadvertently created for newly issued, first to invent patents relative to their availability for Inter Partes Review (IPR). As the technical amendment was enacted into law yesterday, the post grant dead zone has been eliminated.
Scott,
Was the reissue dead zone – mentioned in your December 5th post – also eliminated? I see that 35 USC 311(c)(1) was amended to remove “or issuance of a reissue of a patent.” Does this mean that the 9 month-no-IPR-period following grant no longer applies to broadening reissues? If so, this suggests that parallel IPR and PGR procedures can occur. I suppose, however, one could argue that what remains of 311(c)(1) still covers reissues (do reissues “grant”?), but then what would be the point of the amendment to 311(c)(1)?
Carl,
Yes, the reissue dead zone was eliminated by making clear that the 9 month window occurs only after the original patent grant. Broadening reissues take on average, about 3-5 years to conclude. So, adding up the time…9 month window + 12-18 months for the PGR would probably not get you to the IPR possibility for the later reissue. Also, the PTAB would likely suspend any reissue filing that was co-pending at the time of a PGR, to avoid such a situation.
Scott