Are You Ready For The Next Round of Changes Under the America Invents Act?
July 1, 2012

Although nearly a year has passed since President Obama signed the America Invents Act ("AIA") into law, the next round of changes will take effect Sept. 16, 2012. The Act's next phase of changes are relevant when considering any patent enforcement actions and in defending patent infringement actions. As discussed in my article last fall entitled "Big Changes Coming to Patent Law", several changes have already taken effect, with the second round happening on Sept. 16, and a third round slated for March 2013.

The important aspects of this second round of changes are those directed to procedures for third parties to challenge patents in proceedings before the United States Patent and Trademark Office ("Patent Office"), as opposed to via litigation.

The following significant changes take place on September 16, 2012:

A new Inter Partes Review (IPR) proceeding will replace Inter Partes Reexamination. IPR permits a third party to challenge the patentability of a patent's claims on the basis of novelty (§ 102) or obviousness (§ 103) based on patents or printed publications which are prior art. Although IPR is similar in some aspects to the existing inter partes reexamination, IPR will resemble litigation in that limited discovery and depositions will be permitted and motion practice will be observed. Similar to litigation, an IPR may be terminated upon the joint request of the petitioner and the patent owner, such as pursuant to a settlement agreement, unless the Patent Office has decided the merits before such request. Under the current inter partes reexamination procedure, the reexamination would continue regardless of whether the parties settled, which reduced the incentives to settle disputes short of a decision on the merits. If you have been accused of patent infringement and have strong evidence that the patent is invalid, IPR may provide a faster and less expensive route to invalidate a patent.

A new post patent grant review procedure applicable only to Business Method patents will be available to a party who has been (a) sued for infringement of the business method patent, or (b) charged with infringement of a business method patent. This new post-grant review process will permit the accused infringer to file a request for review of the patent by the Patent Office. Unlike the new AIA post grant for non-business method patents (to be instituted in March 2013), there is no deadline to file the request for post grant review of a business method patent. The new post grant review procedure will provide those accused of infringement of business method patents.

In contrast to current practice, which sharply limits the ability of third parties to submit prior art in pending applications, the AIA now allows third parties to anonymously submit prior art documents in pending applications, so long as the submission occurs prior to the Notice of Allowance, which, if used, could lengthen prosecution of some application. We think that it is unlikely that the new program will be used any more than the existing pre-issue submission program in that such a submission alerts your competitor of the potential importance of its patent application.

A new Supplemental Examination procedure for patent owners allows patent owners the option to request a supplemental examination of a patent to "consider, reconsider, or correct information believed to be relevant to the patent." In summary, the Supplemental Examination procedure gives patent owners a way to submit prior art that could potentially be used against their own patents in a reexamination or litigation proceeding that may have otherwise been initiated by an accused infringer.

Next March, the final round of changes under the AIA will take place, including the changeover to the first-to-file system and the implementation of a new post-grant review proceeding. Stay tuned for future articles about these upcoming changes. Contact Joseph S. Heino (jheino@dkattorneys.com) at 414-225-1452 or your Davis & Kuelthau attorney with any questions regarding trademark selection, registration and enforcement.

 

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