By Scott A. McKeown
| March 26, 2013
Robust Filings Reported for Some AIA Proceedings
Late last week, the USPTO issued a Final Rule to implement the Technical Amendment to the America Invents Act (AIA). The Notice essentially revises 37 C.F.R. § 42.102 to eliminate the "dead zone" for certain first inventor to file patents. You can find the straight forward rule notice (here) The rule became effective yesterday, March 25th.
In other news, the Patent Public Advisory Committee (PPAC) convened on March 15th at the USPTO Alexandria campus. During the meeting, the USPTO reported on the progress of AIA filings to date. There continues to be robust demand for Inter Partes Review (IPR), but others of the new AIA mechanisms have not proven nearly as popular as originally thought.
First, there have only been nine (9) requests for supplemental examination since September 16th. (Click to Enlarge)
In operation, Supplemental Examination (SE) allows a Patentee to submit very detailed explanations of potential issues that may render the patent invalid under an inequitable conduct theory. Upon submission of Substantial New Questions of Patentability (SNQs) detailing such potential defects, the Office will reconsider the information; that is to say the Office will perform a “supplemental examination.” Once such issues are considered and dispatched by an SE certificate, the subject patent would be free of inequitable conduct charges based on the issues considered in the SE. On the other hand, should the materials presented raise an SNQ, a form of patent reexamination is conducted (differing from typical practices in that it is not limited to patents and printed publications).
Pre-Therasense there would have been significant value to SE, but now it is best reserved for only the most egregious cases. It seems very unlikely that the USPTO will receive the 110 filings they initially anticipated in their rule proposals. (SE was seen as potentially replacing all patent owner initiated reexamination requests)
As to petitions for challenging patents before the PTAB, the USPTO reports robust IPR filings, but limited demand for Covered Business Method (CBM) Patent Challenges. (Click to Enlarge)
As CBM filings offer a tremendous value for challengers, it seems that the public is either slow to appreciate the benefits, or there just are fewer patents that fall cleanly into the "business method" definition. For example, as such patents often include "system claims" that present issues of divided infringement, it may be that such patents are being asserted less frequently since the Global Tech/Golden Hour line of cases.