Challenges to Applications and Patents Post America Invents Act

In this Analysis, John M. White addresses challenges to applications and patents in the post America Invents Act world. It includes analysis of protest, third party submission of prior art, public use proceedings, derivation proceedings, supplemental examination, post grant review, citation of prior art in a patented file, ex parte reexam, inter partes reexam, inter partes review, and the transitional program for covered business method patents. Mr. White writes:

     The philosophy of the U.S. patent system has been changed. You will soon discover, upon becoming more and more steeped in the Leahy-Smith America Invents Act ("AIA"), that basic tenets which undergirded the system since inception have been swept away. To wit: Jefferson (yes, that, Jefferson) felt he was over worked and under resourced as the 1st patent examiner (familiar story?). So, like any examiner, he wrote and implemented the law such that his job was relatively simple, and the ultimate responsibility for what was patentable, over the long run, was left to the Courts to figure out in accord with whatever circumstance they collectively encountered. The law was updated and re-written on a handful of occasions since Jefferson's original crack at the statute. The first 200 years of updates tweaked here and there but, mostly, incorporated the best of the judicial guidance since the last re-write and discarded the worst (i.e., "flash of genius", etc.). Not this time.

     On this occasion, the USPTO has been re-molded, kind of like a tire being retreaded, into a newer more vital force in the patent system. Whereas once upon a time the USPTO merely reviewed applications and allowed patents and resolved inventorship issues, now it will be more--much more.

     Here is a brief characterization:

     Four brand new inter-partes patent and application challenge proceedings have been created: Derivation, Post-Grant Review, Inter Partes Review, and Transitional Program for Covered Business Method Patents. A newly constituted Board has been created to administer them, along with new Rules for implementation.

     An older challenge, inter-partes reexamination, has been given a short shelf-life (until September 2012) and higher entry threshold (raised from substantial new question of patentability ("SNQ")) to reasonable likelihood that requester would prevail with respect to at least one claim).

     Existing quasi-inter partes, or third party initiated pre and post-issuance challenges, have been preserved or expanded, to wit: Protest, Public Use Proceedings, Ex-parte Reexaminations (threshold remains SNQ), Third Party Prior Art Submission (in a pending application) bolstered, and Citation of Prior Art in a Patented File expanded. In addition, a new "cleansing" of the file, a remedial "Supplemental Examination" effort by the patent owner has been created.

     With the United States Patent and Trademark Office ("USPTO") now statutorily thrust well into the patent validity scene post-issuance, reasonably, a Federal Court would look askance at an accused infringer whose main defense was invalidity. The Judge would surely press them to handle such a challenge through the organization best suited to the undertaking, i.e., the USPTO. Infringement is now the domain where Courts will tread; the USPTO will become the locus of validity, with rules creating automatic interplay between the USPTO and any Court proceeding.

     Lastly, before we begin, do not forget the considerable application back-log that will persist at the USPTO post-March 16, 2013. This back-log will be selectively eligible for old procedures and old laws. Though the bulk of the back-log will dissipate in 3-4 years (i.e., by 2017), as long as an application in a chain has an "effective filing date" reaching pre-AIA, old law/rules/procedures may selectively apply. For some technologies, this dual phase of pre and post-AIA filings will persist for decades.

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