Enactment of America Invents Act Results in Significant Changes to Post-Grant Patent Reconsideration Options

One of the biggest impacts of the America Invents Act, which was enacted on September 16, 2011, will result from new or modified procedures for submitting patent validity questions back to the United States Patent and Trademark Office (PTO), after the PTO has granted the patent. The various former and new post-grant patent reconsideration options are summarized in a chart which may be found here. Although much of the effect of these new procedures will generally not be felt for at least 12 months from enactment, certain changes have already taken place.

Until now, a third party seeking to challenge the validity of a granted U.S. patent within the PTO was limited to two options: Ex Parte Reexamination (where the requester is not involved in the proceedings once the request is filed) and Inter Partes Reexamination (where the third party has the opportunity to participate throughout the course of the proceedings). Under both these options, a patent’s validity could only be questioned on the basis of lack of novelty or obviousness over patents and printed publications.

Ex Parte Reexamination procedures remain essentially unchanged as a result of the America Invents Act. Although any Inter Partes Reexamination already in progress will continue under the previous rules, Inter Partes Reexamination proceedings will now be replaced, in effect, by a new type of proceeding called “Inter Partes Review.” Inter Partes Review will, however, only become available one year after enactment of the America Invents Act. In the interim, new Inter Partes Reexamination requests may still be filed. However, any such request must now establish that there is a reasonable likelihood that the requester would prevail with respect to at least one claim of the patent being challenged. This is a change from the former standard, which only required that a substantial new question of patentability be established.

The new Inter Partes Review procedure which becomes available September 12, 2012, similarly requires the petitioner to show that it will reasonably likely prevail with respect to at least one claim. Other significant changes from existing Inter Partes Reexamination procedures will also take effect. In particular, any in force patent may be challenged, regardless of its filing date, subject to certain limited exceptions. Formerly, under Inter Partes Reexamination, only patents granted on applications filed after November 29, 1999, were eligible. At that time, however, the impact will likely be significant. In the European patent system, with a post-grant patent opposition system somewhat similar to the new U.S. Post-Grant Review system, upwards of 4 percent of granted patents face a post-grant opposition. If only a fraction of that number are submitted to Post-Grant Review in the United States, it could generate thousands of new post-grant proceedings each year. A petition for Post-Grant Review must be filed within nine months of patent issuance, similar to the European opposition system. Once that nine month window closes, Post-Grant Review is no longer possible and the patent must be challenged by Ex Parte Reexamination or Inter Partes Review. An Inter Partes Review petition cannot be filed earlier than nine months from grant.

The America Invents Act provides for an entirely new third option for parties seeking to invalidate or limit the scope of granted patents. This option, called Post-Grant Review, will be available for any newly issued patent having an effective filing date on or after March 16, 2013. Assuming average pendency before a patent issues remains at two or more years, this new procedure thus will not generally come into play for at least 3 to 4 years after enactment.

Significantly, the basis on which a Post-Grant Review may be brought is considerably broader than in the case of Ex Parte Reexamination or Inter Partes Review. Information other than patents and printed publications, such as evidence of commercial sales or public use prior to the effective filing date, may be relied upon. Moreover, any of the statutory requirements for patentability, not just lack of novelty or obviousness, may be argued by the petitioner to be grounds for invalidation. For example, the petitioner may seek to establish that the specification does not enable the claimed invention or fails to provide adequate written description of the claimed invention under the first paragraph of 35 U.S.C. § 112.

Furthermore, the standard used by the PTO for determining whether a petition for Post-Grant Review of a patent should be granted will be different than that applied in Inter Partes Review petitions. The petition for Post-Grant Review is to be granted if the information presented, if not rebutted, demonstrates that it is more likely than not that at least one claim is unpatentable or if the petition raises a novel or unsettled legal question important to other patents or applications.

The new Post-Grant Review and Inter Partes Review options share certain other features that represent substantial changes from Ex Parte Reexamination and the formerly available Inter Partes Reexamination. In both cases, the petitioner participates in the adjudication and may appeal an adverse decision, as may the patent owner, to the Federal Circuit. Both of the new post-grant procedures, once instituted, are adjudicated and managed by the Patent Trial and Appeal Board, consisting of Administrative Law Judges, rather than a special reexamination unit within the PTO.

Limited discovery will also be permitted under both of the new post-grant procedures. The deposition of any witness who submits an affidavit and such discovery that “is otherwise necessary in the interest of justice” will be possible in conjunction with Inter Partes Review. Post-Grant Review, in contrast, allows for discovery of evidence “directly related to factual assertions advanced by either party.”

Following either a Post-Grant Review or an Inter Partes Review, the petitioner will be estopped, in later civil, PTO or ITC proceedings, from challenging the patent on any ground that was raised or reasonably could have been raised during the post-grant proceeding.

Both Post-Grant Review and Inter Partes Review proceedings can be terminated by settlement between the parties provided no decision on the merits has been rendered, subject to the discretion of the PTO Director.

The America Invents Act additionally provides a new ex parte pre-litigation reexamination system, termed “Supplemental Examination,” where a patent owner may seek to eliminate possible inequitable conduct defenses that might otherwise be raised against the patent during litigation. Also newly provided is a transitional program, which will be in effect for eight years, for reviewing the validity of covered already-issued business method patents in accordance with the standards and procedures of a Post-Grant Review.