Posts Tagged: "inter partes review"

In order for one to file a statement of the patent owner in Federal court the submissions must: (1) Identify the forum and proceeding in which patent owner filed each statement, and the specific papers and portions of the papers submitted that contain the statements; and (2) explain how each statement is a statement in which patent owner took a position on the scope of any claim in the patent. See Section 1.501(a)(3). The required explanation must include discussion of the pertinence and manner of applying any prior art submitted to at least one claim of the patent. See Section 1.501(a)(b)(1). The explanation may also include discussion of how the claims differ from any prior art submitted or any written statements and accompanying information submitted under paragraph.

The recurring theme will be decreased fees for those who qualify for micro-entity status, but increased fees for everyone else. That is great, but micro-entity status will not even apply to all independent inventors, but only a subset of independent inventors who are at the lowest end of the income scale and who have had very few patents or patent applications. Thus, even the professional garage inventor will be a small entity and will pay more — in some cases substantially more — than they pay now. Not to mention the small businesses that are the engine of the U.S. economy. These fees will be a real and substantial impediment to the patent process for those individuals and businesses that we need to be encouraging and incentivizing the most.

Post Grant Review, Inter Partes Review and the Transitional Program for Covered Business Method Patents were instituted with the goal of improving patent quality by giving third parties methods to challenge patents that are less expensive and less involved than litigation. Each of these procedures is a trial before the Patent Trial and Appeal Board (Board) composed of Administrative Patent Judges and subject to Part 42 of 37 C.F.R., Trial Practice Before the Patent Trial and Appeal Board. The trials allow for limited discovery, which has not been available in Ex Parte or Inter Partes Reexamination, the existing procedures for challenging patents in the U.S. Patent and Trademark Office. Because the discovery is limited, it is unlikely that these procedures will be used in cases where large amounts of evidence may be needed to prove patent invalidity.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it will publish final rules in the Federal Register on August 14, 2012, to implement three administrative trial provisions of the Leahy-Smith America Invents Act (AIA); inter partes review, post-grant review, and the transitional program for covered business method patents. The administrative trial final rules offer a third party a timely, cost-effective alternative to district court litigation for challenging the patentability of a claimed invention in an issued patent. These rules become effective on September 16, 2012. With this publication, all of the administrative trial rules the USPTO was tasked by the AIA to complete will have been published.

These proposed fees will undoubtedly be commented on, and the early criticism, which seems quite valid, asks how the addition of a single additional claim to be reviewed can add such large amounts to the cost. For example, if you file a petition for post-grant review and want 30 claims reviewed the fee will be $53,700. If you want 31 claims reviewed the fee will be $71,600, so that extra claim reviewed will cost you $17,900. Of course paying that $17,900 entitles you to bring challenges to 9 other claims, which would be free once you paid for the 31st claim. Essentially, with rigid segmentation of fees it is difficult, if not impossible, to see a cost of recover implementation at work. It would be far more in keeping with the statutory authority to have additional claim fees akin to what happens during prosecution when you go beyond three independent claims or 20 total claims.

The troubling news starts with the fact that a technical amendments bill to the America Invents Act (AIA) that is working its way around Capitol Hill, and in true government by ambush fashion it could work its way into a bill at any time! What is the big deal about technical amendments? The problem is that not all of the amendments will be “technical.” For example, there is a plot afoot to change the estoppel provisions in the AIA relative to post-grant review and inter partes review. In my opinion there would have been absolutely no chance that the America Invents Act would have passed if the estoppel provisions for post-grant review only applied to issues actually raised.

The United States Patent and Trademark Office (USPTO) has proposed a consolidated set of rules related to trial practice before the Patent Trial and Appeal Board. The proposed rules implement the provisions of the Leahy-Smith America Invents Act relating to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.

Notwithstanding the inherent unreliability of legislative history and the truly scary prospect of trying to get inside the head of Members of Congress, it seems fairly clear to me that the America Invents Act, which was signed into law by President Obama on September 16, 2012, contains at least a handful of things that can only be characterized as unintended consequences. Among them are: (1) U.S. patents issued from foreign filings will be prior art as of the foreign filing date; (2) commonly owned patent applications cannot be used against each other for novelty purposes; and (3) the creation of an post grant challenge limbo because of the delay in initiating post-grant review procedures.

On Friday, September 16, 2011, President Obama signed into law “The America Invents Act” (“AIA”) which passed the Senate on September 8, 2011, by a vote of 89-9. The AIA passed the House of Representatives on June 23rd by a vote of 304-117. The measure, which is the product of a seven-years-long legislative battle among patent policy stakeholders, changes how patents are obtained and enforced in the United States. Important reforms to patent law are incorporated into the AIA and, just as significantly, several controversial proposed changes were deleted from the AIA before final passage. This article is a play-by-play of the process and how it unfolded.

Both the House and Senate bills create the opportunity for continual and constant challenges, one right after another. For example, challengers could tie up issued patents in post-grant review, followed by inter partes review and subsequently, or simultaneously, by challenges in one of the Federal District Courts. Thus, the settling of patent rights seems a distant dream if a well funded challenger wants to tie up a patent. The only hope for the patent owner is that with every subsequent challenge it becomes more difficult to challenge. That is what S. 23 sets up by having a “substantial new question of patentability” standard to initiate a post-grant review and then a much heightened “likelihood of success” standard to institute inter partes review.