On March 25, 2013, the U.S. Patent and Trademark Office
(USPTO) published a rule to implement the changes to the inter partes review
procedures that were signed into law on January 14, 2013. The new rule
eliminates the nine-month waiting period for filing an inter partes review
petition challenging patents that were filed under the pre-America Invents Act
(AIA) "first-to-invent" system. The rule clarifies that first-to-invent
patents and reissue patents are eligible for inter partes review
immediately upon issuance.
For patents filed under the pre-AIA first-to-invent
system, the nine-month period after the issuance of the patent was previously
termed a "dead zone." The law formerly provided for inter partes reexamination
of such patents. On September 16, 2012, however, the law changed to disallow inter
partes reexamination requests filed after that date, and instead provided
for inter partes review of such patents. But because inter partes review
was not available until nine months after the issuance of the patent, third
parties were unable to raise challenges within the USPTO during those nine
months-hence, the "dead zone." A similar "dead zone"
existed for reissue patents.
The new rule implements procedural mechanisms for the
elimination of these "dead zones." The USPTO now allows third parties
to seek inter partes review during the first nine months after issuance
of a first-to-invent patent or reissue patent. The new rule also provides that
if post-grant review proceedings have been implemented, inter partes
review proceedings may not begin until the termination of the post-grant review
The Federal Register rulemaking notice may be found here.
For more information on the post-grant and inter partes review
proceedings, please see our IP
Alert of September 18, 2012.
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