Williams Mullen: Changes in Pre-Grant and Post-Grant Challenges at the U.S. Patent Office (USPTO)

Williams Mullen: Changes in Pre-Grant and Post-Grant Challenges at the U.S. Patent Office (USPTO)

Editor Timothy J. Bechen, Alison S. McGeary

The Leahy-Smith America Invents Act, H.R. 1249 ("the Act") will become law once the President signs it this month. The Act proposes many changes to current pre-grant and post-grant challenges and further introduces enhanced post-grant review for business method patents. While most provisions will not take effect until one year from enactment, some reexamination provisions will take effect immediately.

Pre-Grant Submissions

Effective twelve months from enactment, the Act permits a third party to submit prior art patent references and publications to the Patent Office up until the later of six months from publication or before the first Office Action or notice of allowance. In addition, the rule requires that the third party submission point out the relevance of provided patent references and publications. While this increases the window for, and scope of, third party submissions during examination, issues remain as to whether it is advisable to prepare such submissions due to the deference that can be given to USPTO examination and the potential prejudice to raising the same prior art in a later proceeding. Third party submissions at this stage will require caution and careful consideration before filing. Moreover, it remains unclear as to what effect these submissions will have on the examination of existing applications.

Post-Grant Proceedings

Currently, reexamination requests may be filed anytime during the enforceability of a patent, and these requests fall into one of two categories: (1) Inter partes reexaminations, which allow the requesting party to participate in the proceedings; and (2) Ex parte reexaminations, which are conducted substantially exclusively between the patent owner and USPTO.

While ex parte reexamination will remain largely the same once the Act becomes law, inter partes reexamination will become "Post-Grant Review" ("PGR") if conducted during the first nine months following patent issuance, and "Inter Partes Review" ("IPR") if conducted thereafter.

The PGR and IPR procedures are expected to expedite USPTO review by setting a strict timeline. PGR must be requested within nine months from the grant of a patent or a broadening reissue, and all grounds of invalidity except "best mode" will be considered. Importantly, the requester must meet the "preponderance of the evidence" standard, i.e., showing that "it is more likely than not that at least one of the claims challenged in the petition is unpatentable" or "that the petition raises a novel or unsettled legal question that is important to other patents or patent applications." Section 6(d) of H.R. 1249.

After nine months or after post-grant review, an IPR is available and is limited to challenges based on patent references and printed publications. Further, instead of the current "substantial new question of patentability" standard, the requester must demonstrate "a reasonable likelihood" of success with respect to at least one of the claims challenged in the petition. Section 6(a) of H.R. 1249.

Significant points regarding PGR and IPR:

  • Proceedings are designed to be completed within twelve to eighteen months, and will be conducted before the new Patent Trial and Appeal Board (PTAB).

  • The new standards for review are scheduled to take effect immediately, but rules and implementation will not be effective until twelve months from enactment.

  • Estoppel in the USPTO and in civil actions with PGR and IPR occurs if there is a final written decision regarding a claim, and it exists with respect to that claim on any ground that the petitioner raised or reasonably could have raised during the PGR/IPR.

Business Method Patents

The patent reform legislation includes a provision entitled "Transitional Program for Covered Business Method Patents." The provision, while limited to a period of 8 years, provides PGR-type proceedings for patents that were issued prior to enactment and is limited to entities accused or actually sued for infringement of a patent deemed a business method patent. The Act provides that the PTO will develop and implement the PGR guidelines for Business Method Patents within one year. The legislation defines a business method patent consistent with the USPTO Class 705, the business method patent classification.

Should you have any questions, please contact Timothy J. Bechen at 804.420.6477 or tbechen@williamsmullen.com, Alison S. McGeary at 919.981.4319 or amcgeary@williamsmullen.com, or any other member of the Williams Mullen Intellectual Property Team.

© 2011 WILLIAMS MULLEN ALL RIGHTS RESERVED

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