Key Facts & Dates for all Post Grant USPTO Proceedings
While the America Invents Act (AIA) provides many new post grant proceedings, it also introduces changes to existing proceedings. While I have written about these changes previously, it would seem helpful to condense the important facts all in one place. Thanks to Paul Morgan for his suggestion for this post, and contributions to the content.
1. Ex Parte Patent Reexamination (existing proceeding) — The AIA precludes appeals by Patentees to the District Court in ex parte patent reexaminations. (to the extent that right ever existed, previous post (here). That is to say 35 U.S.C § 306 was amended to reference 144 instead of 145. H.R. 1249 at page 29.
Effective Date: Enactment
Side Notes: The SNQ standard, which is no longer used in inter partes patent reexamination is still used in ex parte patent reexamination. Ex parte patent reexamination practice remains largely unchanged by the AIA.
2. Inter Partes Patent Reexamination (existing proceeding, to be replaced) — The AIA replaces the SNQ standard with a new standard, namely a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. H.R. 1249 at page 22.
Effective Date: Enactment
Side Notes: Inter Partes patent reexamination is to be replaced by a new proceeding, discussed below, Inter Partes Review upon the one year anniversary. Current defendants that have been sued on a patent stemming from a post November 29, 1999 application need to be mindful of the anniversary. Defendants that are sued on older patents (pre 11/29/1999) may be better served waiting for the anniversary so that these patents are eligible for an inter partes proceeding for the first time. (see above link for further explanation)
3. Inter Partes Review (new proceeding) —Inter Partes Review is an evolution of inter partes patent reexamination from an examiner based proceeding to a proceeding of the new Patent Trial and Appeal Board (PTAB). The proceeding will allow for limited discovery, settlement, oral hearings, protective orders and many litigation style mechanics. H.R. 1249 at page 16.
Effective Date--One year anniversary of enactment, September 16, 2012
Side Notes: There will be a limit of 281 proceedings (based on FY, 2010 inter partes reexamination filings), per year, until 2016 (See Graduated Implementation). This proceeding will be available for ANY patent issued, before, on, or after the anniversary date. Filing ability may be limited by operation of estoppel, litigation status, or if within 9 months of issuance (so as not to conflict with the Post Grant Review window discussed below).
4. Post Grant Review (new proceeding)– Similar in some procedural respects to Inter Partes Review, but having an expanded scope (i.e., not limited to patents and printed publications) and a limited, 9 month filing window. This will also be a new proceeding of the PTAB. H.R. 1249 at page 22.
Effective Date--One year anniversary of enactment, September 16, 2012
Side Notes: As the grounds for potential challenges are broader, the potential estoppel is also significant. As patents eligible for this proceeding must have been filed on or after March 16, 2013, use of this proceeding will slowly ramp up over time.
5. Transitional Program for Business Method Patents (new proceeding)– This proceeding is Post Grant Review without the 9 month filing window, or limitation with respect to patent filing dates. Any covered business method patent defined by the statute (i.e., not a technological invention) issued before, on or after the effective date is subject to review if the petitioner is sued for infringement or charged with infringement.
Effective Date--One year anniversary of enactment, September 16, 2012
Side Notes: The estoppel provision for this proceeding is narrower than Post Grant Review as it is limited to issues actually raised. To avoid opening a can of worms, it is expected that the USPTO will have a very narrow view of covered patents under this proceeding, which sunsets in 8 years time.
6. Supplemental Examination (New Proceeding) — The AIA provided this proceeding as an avenue to cure inequitable conduct before the USPTO. Upon submission of SNQs that explain potential issues for supplemental examination, the Office may initiate a type of “re-examination” that follows the procedures for ex parte patent reexamination with some modification. In essence this proceeding was based on a “but for” theory later adopted in Therasense. Applies to all patents once effective.
Effective Date–One year anniversary of enactment, September 16, 2012.
Side Notes: Would appear to be of limited value after Therasense. May have some applicability for egregious cases.
7. Patent Reissue (existing proceeding)– The AIA has deleted the language of 35 U.S.C § 251 requiring that an error correctable by patent reissue be made “without deceptive intent.” AIA, Technical Amendments Sec. 20
Effective Date– One year anniversary of enactment, September 16, 2012.
Side Notes: This change was also trying to aid practitioners with respect to inequitable conduct charges prior to Therasense.
8. Patent Interferences (existing proceeding, ending) — The AIA has switched to a first inventor to file system. Patent Interferences will eventually cease to exist going forward, but can still be commenced up to the one year anniversary of enactment. H.R. 1249 at page 28.
Effective Date– One year anniversary of enactment, September 16, 2012.
9. Derivation (new proceeding) — This proceeding is established to combat the unscrupulous filing of a first patent application, that is derived from the work of another applicant (later filed), without authorization. It would seem this proceeding will be exceedingly rare. H.R. 1249 at page 6.
Effective Date–March 16, 2013.