Patent Baristas

On September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act.   This Act is often referred to as the most comprehensive overhaul to our patent system since 1836.

Seven provisions of the AIA and USPTO implementing final rules for these provisions go into effect today on September 16, 2012:

1.  Inventor’s oath or declaration.  

The AIA provides new flexibilities for filing a declaration.  For example, in addition to maintaining current practices, an assignment document can act as a declaration, and in applications with an application data sheet, each inventor can execute a separate declaration, and the filing of a declaration can be postponed until the application is in condition for allowance.

2.  Pre-issuance submissions.  

The rules allow third parties to file pertinent publications—and a short statement of relevance—in patent applications prior to issue. The third-party submission rules allow any third party to submit any patents, published patent applications, or other printed publications of potential relevance to examination. 37 C.F.R. § 1.290(a). This includes litigation papers and court documents not subject to a court-imposed protective or secrecy order but does not include trade secrets information, unpublished internal documents, or other unpublished documents.

3.  Supplemental examination.  

Patent owners will be able to request supplemental examination of an issued patent, which could help protect the patent against certain inequitable conduct allegations. If a request for supplemental examination is accepted, the USPTO will institute an ex parte reexamination. The threshold for acceptance is whether a substantial new question of patentability has been raised.

4.  Citation of patent owner claim scope statements.  

This provision expands the type of information that a patent owner or third party may submit into a patent file. It will allow submission of patent owner statements about claim scope that were made in a federal court or a USPTO proceeding.  The provision also defines how the Office may use such information during ex parte reexamination, inter partes reexamination, and post grant review.

5.  Post grant review.  

Post grant review provides for another method for third parties to challenge a patent’s validity. Most aspects of the post grant review is the same as the inter partes review. For example, the petition requirements and patentee response are almost the same.  However, post grant review only will apply to those patents granted through the first-inventor-to-file system. Also, patents subject to post grant review may be challenged under 35 U.S.C. § 101 (utility or patentable subject matter requirement) and 35 U.S.C. § 112 (definiteness requirement) in attrition to § 102 (novelty requirement) or § 103 (non-obviousness requirement). Finally, the post grant review petitioner has a higher burden to initiate this procedure, the petitioner must show it is more likely than not that at least one of the challenged claims is not patentable.

6.  Inter partes review.  

Under the AIA, inter partes review under 35 U.S.C.  § 311(c) will take the place of inter partes reexamination. A person who is not the patent owner and has not previously filed a lawsuit challenging the validity of a patent claim may file an inter partes review. An inter partes review petitioner, however, only may request to invalidate one or more patent claims on the basis of lack of novelty under 35 U.S.C. § 102 (novelty requirement) or as obvious under 35 U.S.C. § 103 (non-obviousness requirement) and only based on prior art consisting of patents or printed publications. An inter partes review cannot be filed until after the later of nine months after the grant of a patent or the date of termination of any post grant review of the patent. The patentee may file a preliminary response, providing reasons why no inter partes review should be conducted. An inter partes review petition must show there was a reasonable likelihood that the petitioner would prevail as to at least one of the claims.

7.  Covered business method review.  

The AIA also creates a transitional program for some business method patents so that alleged infringers can challenge a covered business method patent’s validity through post-grant review. The AIA defines covered business method patents as those claiming a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological innovations.  The final rules, however, don’t say what exactly constitutes a “technological innovation.”

Want to learn more?:

• Attend a USPTO roadshow and engage with USPTO officials;
• Access the AIA micro-site roadshow page featuring detailed slides and videos; or
• Access the AIA help telephone line 1-855-HELPAIA or AIA help email at HelpAIA@uspto.gov
• Leahy-Smith America Invents Act
• America Invents Act Effective Dates