Post Grant Review under the America Invents Act of 2011 - Presented by Suffolk Law School

As part of the Suffolk Law School Podcast Series, Dr. Eldora L. Ellison, of Sterne Kessler Goldstein & Fox, recently discussed post-grant review under the America Invents Act of 2011.

Exit Inter Partes Reexamination, Enter Post Grant Review

Currently, there are two types of patent reexamination: 1) ex parte; and 2) inter partes. Ms. Ellison notes that while the first will continue unaffected by the Act, the second will be phased out a year from enactment. However, the standards for initiating inter partes reexamination will be changed immediately.

In place of inter partes reexamination, the Act creates a new proceeding called post-grant review. Ms. Ellison examines post-grant review and offers several observations:

a)      post-grant review allows any grounds for an invalidity challenge;

b)      failure to comply with the "best mode" requirements will no longer be grounds for attacking validity:

c)      review can be initiated if the petition raises novel or unsettled legal questions important to other patents/applications (though it is not yet clear what constitutes a novel or unsettled legal question);

d)      patent owners now have the opportunity to file a preliminary response; and

e)      the standard for review no longer depends on a substantially new question of patentability. Instead, it must be established that more likely than not at least one of the challenged patent claims is unpatentable.

Ms. Ellison goes on to note that the Patent Trial and Appeal Board is the new reviewing authority rather than the Central Reexamination Unit. She also discusses post grant limitations/procedural issues and forecasts several uncertainties regarding patents, proceedings and litigation.

Listeners can access Ms. Ellison's complete podcast, Post Grant Review under the America Invents Act of 2011, at Suffolk University's  Intellectual Property Law Podcast Series - IP Law Podcast Series.

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