Patents Post-Grant: Draft Bill Proposes Fixes to America Invents Act

Patents Post-Grant: Draft Bill Proposes Fixes to America Invents Act

Straight Forward Changes Expected to Pass Quickly

As discussed last month, Congress will be considering a technical amendment to the AIA before Christmas. Congressman Lamar Smith (R-Tx) proposed this bill (H.R. 6621 here) to the House last Friday, passage of which seems very likely in the near term.

The proposed technical changes relating to post grant patent practice are as follows:

1. Eliminate the 9 month dead zone that now applies to newly issued, first to invent patents relative to the availability of Inter Partes Review (IPR). As a reminder, patents issuing today, are not eligible for IPR until 9 months has passed, despite the fact that PGR is not a possibility for such first-to-invent patents.

2. Repeal 35 U.S.C. 325(f), which prohibited Post Grant Review (PGR) for "narrowing" reissue patents that issue after the 9 month window of the original patent issuance. (which, practically speaking, would be all of them anyway). The idea here is that 325(f) creates another type of dead zone for narrowing reissue (i.e., existing 325(f) creates a 9 month period where neither PGR nor IPR would be possible after reissue of the patent).

3. Correct some scrivener errors in the Transitional Program for Covered Business Method Patents.

4. Adjust the derivation and interference rules (e.g., provide for court review of interference proceedings after September 15, 2012).

Not surprisingly, the draft bill avoids some of the thornier issues, such as the significant estoppel of Post Grant Review (PGR). While a change to this standard is necessary, in my opinion, the controversy surrounding such a proposal would likely kill any chance of the bill passing this year. Some other post grant fixes may still be added, of course, H.R. 6621 is just a starting point and amendments may be proposed along the way. Stay tuned.

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