Repeal of 325(f) May Have Unintended Consequences

As discussed earlier this week the House is currently considering H.R. 6621, which proposes some technical corrections to the America Invents Act. One of the stated goals of the technical bill is to eliminate the 9 month dead zone that now applies to newly issued, first to invent patents relative to the availability of Inter Partes Review (IPR). This technical change is proposed in Section 1(d)(1) of the bill.

As a reminder, patents issuing today are not eligible for IPR until 9 months has elapsed from the time of issuance. This is because the first 9 month window after patent issuance is reserved for Post Grant Review (PGR) challenges; yet PGR is not a possibility for such first-to-invent patents. (first-inventor-to-file applications, which are eligible for PGR, will not even be accepted by the PTO until March 16, 2013)

The bill also proposes, in Section 1(d)(2) to address another perceived dead zone that is particular to reissued patents. But, correction of this perceived dead zone, in the manner proposed, may have unintended consequences.

As enacted, the AIA permits PGR for those patent reissue filings that are “broadening” with respect to the originally issued patent. (See 35 U.S.C. § 321(c) in view of 325(f)). So, theoretically speaking,  a broadened reissue patent is eligible for PGR twice. Once during the first 9 months of issuance, and then again, 9 months after the patents is broadened via patent reissue. When you think about it, this makes sense as a broadening of the original claims of the patent may result in liability for a new group of potential infringers. On the other hand, 325(f) prohibits a second window for those patents that are reissued with identical, or narrowed claims. (assuming the first 9 month window has expired, which is a practical certainty).

The current concern with 325(f) is that the narrowing reissue patent would not only be ineligible for PGR under 325(f), but is also immune to IPR for 9 months for reissuance (i.e., dead zone). To remedy this perceived technical fault with the AIA, the Bill proposes to repeal 325(f).

While repeal of 325(f) will address the dead zone it will also create a second PGR window for a patent with claims that are unchanged, or narrrowed long after the close of the first 9 month PGR window.

In essence, repeal of 325(f) ensures that all —not just reissues with broader claims— will be subject to two separate PGR windows. There does not appear to be any compelling policy reason to subject a patent that has been narrowed to such additional scrutiny. If 325(f) is repealed, there would be a significant disincentive to correct high value patents via patent reissue. This would be especially pronounced in the Bio/Pharma area, where PGR challenges are more of a concern.  A more sensible solution would be to simply amend 325(f) or 311(c) to exclude narrowing reissues from the 9 month delay period while maintaining the prohibition of 325(f).