Provisions of the America Invents Act Effective as of September 16, 2012

The America Invents Act (IAI) is now one year old and several important provisions are now in effect.  Some of these provisions are important to both patent holders and anyone who wants to challenge the validity of a patent.  The newly in-force provisions include:

• Prior art submissions by third parties;
• Post-grant review of newly issued patents;
• Post-grant review of covered business method patents;
• Inter partes review of issued patents; and
• Supplemental examination

Prior Art Submissions by Third Parties

Third parties may now submit any printed publication of potential relevance to the examination of a patent application.  This allows a third party to let the patent examiner know of relevant prior art that may have a bearing on patentability.  Third party submissions must be filed before a notice of allowance and before the later of 6 months after publication or the date of the first office action (not a restriction requirement).  Submissions must include a brief explanation of why the submitted documents are relevant.

This can be advantageously used as a persuasive brief arguing against patentability.  Third-party submissions of prior art may provide a relatively inexpensive way to invalidate a competitor’s patent before it ever issues.  Businesses should consider a patent monitoring service to monitor published patent applications for business damaging patents.

Inter partes Review of Issued Patents

This new review procedure replaces the old inter-partes reexamination.  Anyone (except for the patentee) can petition for inter partes review of the patent, seeking cancellation of one or more claims based on the claim(s) being anticipated and/or obvious in view of one or more prior art documents (limited to patents and printed publications).  This review allows the third party to participate throughout the process, including comments on any arguments or amendments made by the patentee.  Unfortunately, the Patent Office has set the base government fee for inter partes review at $27,200, making this approximately three times as expensive as the previously available inter-partes reexamination.

Post-Grant Review of Newly Issued Patents

This new review procedure allows anyone (except for the patentee) to petition for post-grant review of the patent, requesting cancellation of one or more claims.  Unlike inter-partes review, the petition for post-grant review is not limited to anticipation or obviousness arguments based on prior art documents.  Post-grant review may also argue the claims are directed toward ineligible subject matter, the claims are invalid because the written-description in the patent is insufficient to support the claims and the claims are invalid as anticipated and/or obvious in view of prior public use or disclosure (as well as any prior art documents).

This provides options for arguing invalidity that were not previously available from the Patent Office (and which otherwise require Federal Court litigation to resolve).  Unfortunately, the Patent Office has set the base government fee for post-grant review at $35,800.  Also, the petition must be filed no later than nine-months after the date the patent was granted.  Due to this short timeframe, businesses should consider a patent monitoring service to monitor for business damaging patents.

Post-Grant Review of Covered Business Method Patents

This new review procedure is a broadening of the post-grant review, as applied to “covered business method patents.”  Post-grant review of covered business method patents is allowed anytime between September 16, 2012 and September 16, 2020 and is not limited by the grant date of the patent.  Only a person who has been charged with infringement of a patent that claims a covered method of corresponding apparatus can file a petition under this procedure.  The petition may be brought under the same grounds as the post-grant review, but with limits on the prior art that may be asserted.

Supplemental Examination

This new review procedure is now available to patent owners to correct mistakes made during the prosecution of the patent.  The patent owner may present any information believed to be relevant to the patent including any ground of patentability, i.e., patent eligibility of the subject matter of the claims, anticipation or obviousness in view of prior art, lack of written description, enablement, best mode and indefiniteness of the claims.  Supplemental examination can be used to cure what otherwise might be considered inequitable conduct during the prosecution of an application, although it is expensive.  A request for supplemental examination requires a total government fee of $21,260, although $16,120 is potentially refundable.

Please contact us here at Woodard, Emhardt, Moriarty, McNett & Henry LLP if you need any assistance with these or any other IP matter.