For a number of years, the patent system was composed of four main proceedings to challenge patent validity – reexamination, reissue, interference and litigation in federal court. Understanding how patent proceedings occur in the patent office will help you understand what you might be in for when patenting your invention.

Current Proceedings – Reexamination and Reissue

Ex Parte Reexamination – Since the early part of the 1980s, this process permits the patent owner or a third party to request USPTO examination for an already-granted patent. This request is based on patents and printed publications that the requestor is bring to the USPTO’s attention.

Once the ex parte reexamination proceedings have started, only the patent owner and the patent office are involved, even if the process was initiated by a third party. Third parties may request a reexamination of another person’s patent, but that’s about it.

Ex parte reexaminations aren’t really changed by the AIA. The AIA did clarify, however, that the only avenue available for patent owners to appeal negative decisions of BPAI or PTAB is the Court of Appeals for the Federal Circuit.

AIA Replaces Inter Partes Re-examination with Inter Partes Review

The AIA has significantly changed the process for third-party post grant challenges by replacing inter parte reexaminations with inter parte reviews and post grant reviews.  While inter partes review is similar to inter partes reexamination, there are several key differences including who may bring the proceedings and the standard of proof required to commence the proceedings.

Post-Grant Review

Post-Grant review is a new proceeding under the AIA and resembles an EPO opposition. Third parties can initiate post-grant by filing a challenge within nine months of the patent’s issuance or reissuance. The standard for invoking post-grant review is that the challenger must establish that at least one challenged claim is more likely than not to be found unpatentable or that the challenge raises a novel or unsettled legal question that is important to other patents or patent applications. For patents to be eligible for this type of proceeding, they need to have a filing date of March 16, 2013 or later.

Supplemental Exam

Supplemental Examination is a new proceeding under the AIA (America Invents Act) that allows patent owners to request that the USPTO consider, reconsider, or correct any information the patent owner considers to be relevant to the patent. This essentially allowed the patent owner to immunize the patent from inequitable conduct allegations related to the information forming the basis of the request.  As part of the supplemental examination, the USPTO will determine if the submitted information raises a substantial new question of patentability, and if so, will order an ex parte reexamination.

By Anna Shapiro

An overhaul of the US patent law began with the America Invents Act (“AIA”) back on September 16, 2011. Thanks to the changes in key provisions, the US is moving to a first-to-file system, significantly expanding upon the traditional definition of prior art and changing the process for contesting a patent.

  
Being the First-to-File

As of mid-March, the patent office began using a first-to-file system instead of a first-to-invent system that we currently have in existence. Inventors will no longer be able to claim priority based on the date that they first thought of their invention. Instead, priority will be determined based upon the filing date of the application. Clients are going to have to file their applications earlier and follow-up on their applications more frequently than what the current procedures necessitate.

If your company is privately backed, it means that you are going to need to spend additional money on your patents, the development of strategies for patents and the overall patent process a lot earlier in the game than what you had to with the older system.

Changes to Prior Art under the AIA

The AIA, which became effective on March 16, 2013, greatly expanded the scope of what activities and publications are considered to be “prior art.”  One of the biggest changes is that disclosure by publication, public use or sale anywhere in the world before the date of filing now counts as prior art whereas only US disclosure before the date of invention used to qualify.  For more on Prior Art and FAQ’s visit: http://www.uspto.gov/web/offices/pac/mpep/mpep-2200.html
 
Post Grant Review

As of September 16, 2012, the process of post-grant review took effect. Post grant review generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. Post grant review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b) (2) or (3).  Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent.  The patent owner may file a preliminary response to the petition.  A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is un-patentable.  If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months).

To understand all of the ins and outs of patent law, you need to enlist the help of a professional attorney. Not knowing what the process is and what steps you need to take can cause more problems than what it’s actually worth. Don’t waste time. Call an experienced patent attorney who can and explain the process.

 By Anna Shapiro