Patrick A. Doody
The America Invents Act of 2011 brought a number of changes to the U.S. patent system, including many new rules and ramifications that will spool out for up to several years hence.
Among the most significant were the changes to post-grant proceedings—the formal processes offered by the U.S. Patent & Trademark Office by which you can challenge a competitor's patent, or strengthen a patent already granted to you.
- Overall, the AIA significantly increased the opportunities for challenging or enhancing a patent via a PTO proceeding.
- The new Patent Trial and Appeal Board replaced the PTO Board of Patent Appeals and Interferences, and heard four types of contested cases.
- These contested proceedings became more like litigation, with opportunities for discovery, document requests, depositions and sanctions.
- Most proceedings allowed for settlements and/or arbitration by the parties.
Given these changes, patent holders and challengers should employ counsel with both exceptional patent prosecution and patent litigation skills for post-grant proceedings. While many firms either shun patent prosecution or pigeon-hole attorneys into one practice or the other, Pillsbury's patent team has the unique blend of prosecution and litigation experience required to handle any post-grant proceeding before the PTO.
Multiple Proceedings Options
Pillsbury's value in post-grant proceedings begins with advising you on the strategic advantages of selecting one type of proceeding versus another.
Patent holders have two potential options for strengthening an existing patent: supplemental examination and patent reissue. Prospective patent challengers have four options: post-grant review, inter partes review, ex parte reexamination, and interference or derivation proceedings.
All of these post-grant proceedings are summarized below. Limitations and other aspects of these proceedings are discussed in greater detail on the pages linked to the headers.
Post-grant review is a trial proceeding at the Patent Trial and Appeal Board to review the patentability of claims on any grounds that can be raised under 35 U.S.C. § 282(b)(2) or (3).
The process begins with a petition filed within nine months after a patent grant or reissuance. The patent owner may file a preliminary response. If it appears "more likely than not" that at least one challenged claim is unpatentable, a post-grant review may be instituted.
The post-grant review became effective on September 16, 2012. With the exception of "covered business method patents," the post-grant review procedure generally applies to patents subject to the AIA's first-inventor-to-file provisions, i.e., patents issuing from applications having an effective filing date after March 16, 2013.
Inter Partes Review
Inter partes review, which replaced the inter partes reexamination option, is a trial proceeding to review the patentability of claims, but using only prior art consisting of patents or printed publications. It can be used as an alternative to litigating patent validity in federal District Court.
The process begins when a party other than the owner of the patent files a petition for review after the later of either: 1) nine months after the grant or re-issuance of a patent; or (2) the termination of any post-grant review.
Unlike the previous Inter partes reexamination, the review proceedings allow for discovery by the parties. The inter partes review procedure took effect on September 16, 2012, and applies to any patent issued before, on, or after that date.
Ex parte reexamination
Ex parte reexamination remained substantially intact after passage of the AIA. An ex parte reexamination can be requested by the patent holder or another party, but the review process itself involves only the PTO and the patentee. Ex parte reexamination continues to be conducted before a patent examiner, and not the Patent Trial and Appeal Board.
The review of a patent is based solely on patents and printed publications. The standard for instituting ex parte review is "a substantial new question of patentability," as opposed to the higher standard in inter partes review – "a reasonable likelihood of prevailing on at least one claim."
Patent Interferences and Derivation Proceedings
The first-inventor-to-file aspect of the AIA eliminated interference proceedings from the Patent Board's docket, but continues to apply to any patent claim filed prior to March 16, 2013. In determining who was the first to invent a given subject matter, interferences often boil down to a validity attack on the earliest-to-invent claim. These proceedings can be contentious and often require extensive discovery.
A derivation proceeding is a trial option in which the Board will determine whether 1) an inventor "A" named in an earlier patent application derived his or her claimed invention from an inventor "B" named in the derivation petitioner’s later patent application, and (2) the earlier application was filed without inventor B's authorization.
A petition for a derivation proceeding must be filed within 1 year of the first publication of the petitioner's claim to an invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application. Like the current interference proceedings, derivation proceedings will be contested cases between two parties, with limited discovery available. Derivation proceedings became effective on March 16, 2013.
For any patent holder seeking to enforce a patent, the supplemental examination presents an excellent opportunity to submit information to the PTO prior to litigation. This helps avoid an inequitable conduct charge that might otherwise be asserted for failing to submit this information.
Filed by the patent owner, a supplemental examination request asks that the PTO "consider, reconsider, or correct information believed to be relevant to the patent." This information is not limited to patents and printed publications, and may include other issues such as those specified under 35 U.S.C. 112.
If the information submitted raises a "substantial new question of patentability," an examination will be conducted in keeping with ex parte procedures, with the exception that the reexamination is not limited solely to patents and printed publications. The supplement examination process became effective September 16, 2012, and can be use for any patent issued before, on, or after that date.
Patent reissues are another avenue for correcting errors in an issued patent. By eliminating a previous requirement that the error occur without "deceptive intent," the AIA has made it easier to request a reissue.
The reissue proceeding is handled by a patent examiner and is similar to a standard patent prosecution. However, critical differences between the two proceedings can lead to a poor outcome if they are not handled correctly. This is an area where Pillsbury's patent attorneys provide significant value.
Our reissue attorneys have extensive experience in appropriately broadening or narrowing patent reissue applications, and in protesting reissue outcomes, which is particularly helpful to clients who are preparing to enforce their patent through a patent infringement lawsuit.