The Landscape of Patent Challenges at the USPTO Post AIA

 

The America Invents Act (AIA) was signed into law by President Obama on September 16, 2011. The Act presents a host of major changes to the patent laws of the United States. A primary effect of the law is that it moves America into a “first-to-file” system as opposed to the “first-to-invent” system.   The AIA has also implemented new procedures for patent challengers to invalidate existing patents or pending patent applications.  The new procedures coupled with prior existing procedures combine to provide an arsenal of patent defeating strategies.  This blog discusses many of the available strategies.

The Post Grant Review (PGR) under the AIA is a new procedure available at the Patent Trial and Appeal Board (“PTAB”) that presents a broad and early challenge to the validity of a recently issued patent.  The challenger may only challenge within the first 9 months after the patent issues.  The standard for granting a PGR is more lenient than the below mentioned Inter Partes Review.  The standard is whether it is “more likely than not” that at least one challenged claim is unpatentable, or whether the petition raises a novel or unsettled legal question that is important to other patents or patent applications.  Furthermore, under a PGR, a patent may be challenged on any ground for invalidity.  Challengers are not only limited to patents and printed publications as sources of prior art, therefore evidence of public use, on-sale activity, or other public disclosures are allowed.

The Inter Partes Review (IPR) under the AIA replaces the pre-AIA Inter Partes Reexamination which was used to challenge patents at the PTAB.  A key difference of this proceeding is a new standard for granting an IPR: there must be “a reasonable likelihood that the requester will prevail.”  The challenger may request an Inter Partes Review either 9 months after a patent is granted, or after the termination of a Post Grant Review proceeding.  Challenges utilizing the IPR are limited to only statutory requirements of novelty and non-obviousness under 35 U.S.C. §§ 102 or 103.  Challengers are also limited to only printed publications and patents for prior art purposes.

For both PGRs and IPRs, the PTAB issues a final written decision regarding the validity of the challenged patent.  It is important to know that all final written decisions made under an IPR or PGR results in estoppel of any ground raised or that reasonably could have been raised.  This means the challenger is prevented from making further arguments in other forums, such as  the USPTO, Federal courts, and the International Trade Commission.

Third Party Submissions (Pre-Issuance Submission) is another new procedure for challenging patents under the AIA.  This presents an easier avenue to challenge a patent application, while also allowing anonymity.  A third party may submit patents, published patent applications, or other relevant printed publications to a pending patent examination.  The submissions may be made before the earlier of: 1) the notice of allowance; OR 2) the later of: 6 months after the publication date OR the first Office rejection on the merits.  Third party submissions do not have to identify the real party in interest.  Submissions may be made in all types of patent applications.  A concise description of the relevance of each document submitted is required.  The third party bears the burden of establishing the date of the document if the asserting document is prior art.

Derivation Proceedings replace interference proceedings under pre-AIA law.  After March 16, 2013, applicants may file a petition for a derivation proceeding.  This new procedure is a result of the new first-to-file system under the AIA, used to resolve priority contests for near-simultaneous inventors who file applications for the same invention.  The petition must be made under oath and supported by substantial evidence that an inventor in an earlier patent application derived the claimed invention from the petitioner.  Furthermore, the petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.

Ex Parte Reexaminations have not been changed much after the AIA.   The main difference is the cost of the procedure, in which the fee went up from $2,520 to $12,000 for large entities ($6000 for small entities).  The standard for this procedure is if a substantial new question of patentability is presented.  The procedure is done ex parte which means there is no chance for participating in the proceeding after filing.  Anyone can request ex parte reexamination at any time during the period of enforceability of the patent.  Prior art considered during reexamination is limited to prior art patents or printed publications.

Supplemental Examinations present a new method for patent owners to “fix” their patent.  This procedure allows a patent owner to request supplemental examination in order to consider, reconsider, or correct information relevant to the patent.  Information is not just limited to patents and printed publications; transcripts of audio or video recordings are allowed.  The patent owner must list each item of information and explain why it is relevant to the patent.  Most importantly, information considered, reconsidered, or corrected during the supplemental examination cannot be a basis for rendering a patent unenforceable due to inequitable conduct.  The standard for granting the request for supplemental examination is whether the information raises a substantial new question of patentability.  If the standard is met, an ex parte reexamination will be conducted.

In sum, there are a variety of new mechanisms to challenge patents after the the enactment of the AIA.  All should be considered as part of a comprehensive litigation strategy.

By Alan Chang and John Buche

Summary Table of Challenging Patents

Eligible patents for challenging

Types of Prior Art

Timing

Standard for challenging

Grounds for challenging

Fee
Post Grant Review Patents filed after March 16, 2013, and certain exceptions NOT limited to printed publications and patents. Within 9 months of patent issuing More likely than not that at least one claim is unpatentable Almost any ground (§§ 101, 102, 103, 112) $12000 + $250 each claim over 20; $18000 for post-institution fee + $550 each
Inter Partes Review All patents Only patents and printed publications 1) 9 months after the patent is granted, or 2) after the termination of a PGR proceeding Reasonable likelihood that petitioner will prevail 35 U.S.C. §§102 or 103 $9000 + $200 each claim over 20; $14000 for post-institution fee + $400 each claim over 15
Third Party Submission All patents Patents and any relevant printed publications Earlier of 1) notice of allowance; or 2) the later of 6 months after publication date or the 1st Office action on the merits N/A Any ground $180 (Large entity) or $90 (Small entity)/every 10 documents;or $0 if ≤ 3 documents and only one submission
Ex-Parte Reexamination All patents Only patents and printed publications Anytime during enforceability period of the patent Substantial new question of patentability 35 U.S.C. §§102 or 103 $12000 (large entity) or $6000 (small entity)
Derivation Proceeding Patents filed after March 16, 2013 N/A Within 1 year of publication date Substantial evidence that an inventor in an earlier patent application derived the claimed invention from the petitioner N/A $400 petition fee + preparation fees