The America Invents Act preserves court review under both 35 USC 141 and 35 USC 146 of decisions by the Board of Patent Appeals and Interferences and the Patent Trial and Appeal Board in interferences decided before September 15, 2012 and in interferences pending on September 15, 2012. However, the AIA contains no language expressly preserving court review for interferences declared after September 15, 2012.
Section 6(f)(3)(C) of the America Invents Act (hereinafter referred to as "the AIA") preserves court review under both 35 USC 141 (straight appeals to the Federal Circuit) and 35 USC 146 (civil actions in district courts having personal jurisdiction over winning interferents) of decisions by the Board of Patent Appeals and Interferences (hereinafter referred to as "the BPAI") and the Patent Trial and Appeal Board (hereinafter referred to as "the PTAB") in interferences decided before September 15, 2012 and in interferences pending on September 15, 2012. However, the AIA contains no language expressly preserving court review under either 35 USC 141 or 35 USC 146 for interferences declared after September 15, 2012--despite the obvious fact that interferences will continue to be declared for on the order of another decade. The absence of a "savings clause" preserving court review of decisions in interferences declared after September 16, 2012 no doubt creates a negative inference that Congress, in its wisdom, deliberately decided to do away with court review of the PTAB's decisions in such interferences. However, as explained in this article, we think that there are enough contrary arguments to at least leave an open question as to whether there will be court review of such decisions. Moreover, if Congress could be persuaded that doing away with court review of the PTAB's decisions in interferences that were not yet pending on September 16, 2012 was not a wise thing to do, it would be an easy error to correct. At the end of this article, we propose technical amendments to 35 USC 141 and 35 USC 146 which would remove all doubt by clearly providing appellate jurisdiction in the Federal Circuit to entertain appeals from the PTAB's decisions in such interferences and original jurisdiction in the district courts over civil actions to review the PTAB's decisions in such interferences. Will The AIA's Amendments To 35 USC 141 And 146 Be Applied Retroactively? On and before September 15, 2012, potential interferents had what might be referred to as "inchoate rights" to judicial review of the decisions in prospective interferences. However, if the absence of language in the AIA expressly preserving those rights is interpreted as taking away those inchoate rights, then the statute will have arguably done so retroactively. While Congress clearly has the authority to pass laws with retroactive effect, the courts disfavor the retroactive application of laws without a very clear Congressional signal that they are to do so. [footnotes omitted]
by Charles L. Gholz and Lisa M. Mandrusiak
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Charles L. Gholz is a Partner in Oblon, Spivak, McClelland, Maier & Neustadt, LLP. His direct dial telephone number is 703/412-6485, and his email address is email@example.com. Lisa M. Mandrusiak is an Associate in Oblon, Spivak, McClelland, Maier & Neustadt, LLP. Her direct dial telephone number is 703/412-6492, and her email address is firstname.lastname@example.org.