AIA Introduces New Post-Grant Review Procedures Before PTO

The recently enacted America Invents Act (“AIA”) is the most far reaching reform to the patent laws in the United States since 1952. One significant change is the AIA’s introduction of several new procedures for challenging the validity of an issued patent before the United States Patent and Trademark Office (“PTO”). The AIA provides for post-grant review of new patents. Post-grant review, however, will only be available to challenge patents that issue under the AIA’s new first-to-file regime. Of more immediate concern, the AIA also provides for a new inter partes review (“IPR”) procedure that will be available to challenge any enforceable patent, including those issued before enactment of the AIA.

The new IPR will replace the current inter partes reexamination proceeding on September 16, 2012. Like reexamination, IPR is intended to provide a quick and inexpensive alternative to litigation in the federal courts to challenge the validity of issued patents. Anyone with issued patents or who conducts business in an industry with competitors that wield patents should be familiar with the opportunities and challenges presented by the new IPR procedures.The most significant differences between the current reexamination procedures and the IPR procedures include:

• Trial Proceeding – The AIA creates a new Patent Trial and Appeal Board (“PTAB”) that will conduct IPR trials before a panel of experienced administrative patent judges. The trial proceeding will provided for limited discovery. The decision of the PTAB will be appealable directly to the U.S. Appeals Court for the Federal Circuit, which is a significantly more streamlined process than reexamination.

• Timing – One disadvantage to challenging the validity of patent in federal court is the length of time – typically several years – it takes to resolve the issue. The AIA requires that IPR trials be completed within 18 months (one year with a possible six month extension) from the time that the IPR trial is instituted.

• Time Frame – The effort required to prosecute or defend an IPR trial is likely to be greater than the equivalent reexamination proceeding due to the additional discovery provisions. However, the compressed time frame in which the trial must be completed should serve to keep costs in check. In any case, the cost of an IPR will be significantly lower than a trial in federal court.

Like reexamination, IPR only provides a means for challenging the novelty and obviousness of a patented invention based on prior patents and printed publications. A petition to institute an IPR may be filed by anyone from nine months after a patent issues through the time when the patent ceases to be enforceable. Also, similar to inter partes reexamination, challengers must choose between IPR and civil trials. Once a final decision is rendered on the validity of the patent claims, the challenger may not retry the issue in either the federal courts or by an IPR.

Patents owners and others concerned about the validity of an issued U.S. patent should be aware that on September 16, 2012, the new IPR trial will become available. The IPR trials are intended to be an effective mechanism for settling validity issues and should be used to challenge a patent where there is reason to believe that the patented invention is described or obvious over prior patents or other publications.