Second Wave Of Patent Practice Changes Under The AIA

Friday, October 12, 2012 - 15:35
Joseph A. Capraro Jr.

Joseph A. Capraro Jr.

The U.S. Patent and Trademark Office ("Patent Office") recently issued a set of final rules for implementing certain provisions of the Leahy-Smith America Invents Act (AIA) that become effective on September 16, 2012. The following is a summary of these new rules.


A company/employer may now file a U.S. patent application on behalf of inventors, and the inventor oath/declaration need not be filed until the conclusion of prosecution. Alternatively, the inventor assignment of rights can include the required language and obviate the need for a separate oath/declaration document.

More specifically, an application may be filed by (i) an assignee, (ii) an entity to whom the inventor is under an obligation to assign the invention or (iii) an entity having sufficient proprietary interest in the matter.

Although an oath or declaration is still required for each inventor, the requirements are simplified and can be included in an executed assignment that is recorded with the Patent Office. The new rules merely require statements that the application was made or authorized to be made by the inventor and that he/she is an original inventor or an original joint inventor of a claimed invention in the application. Other information or statements previously required under the old rules have either been eliminated or must now be submitted to the Patent Office in an application data sheet (ADS).

Under the new rules, the filing of the oath or declaration may be postponed until the application is ready for allowance, provided that counsel has signed and submitted an ADS that includes the name, mailing address and residence of each inventor. Should an inventor be deceased, legally incapacitated, unreachable after diligent effort or unwilling to execute the oath or declaration, a non-inventor applicant may file a substitute statement in lieu of the oath or declaration. This procedure replaces previous rules and has less stringent requirements.

Third-Party Preissuance Submissions

When a third party is aware of printed publications that are potentially relevant to the examination of the claims of any pending patent application, the third party may submit the publications to the Patent Office for consideration and inclusion in the record of the application. These submissions are not allowed during reexamination or reissue proceedings. The identity of the real party in interest need not be disclosed. No service on the applicant is required.

The submission must be made in writing and include a concise description of the asserted relevance of each document, such as a claim chart description. The submission also must be filed before the earlier of (i) the mailing date of a notice of allowance or (ii) the later of six months after the application is published or the date of first rejection of any claim by the examiner.

Each submission will be considered in the same manner as documents cited in an information disclosure statement (IDS). A copy of the document list indicating which documents the examiner considered will be provided to the applicant and will be printed on the patent that issues. The third party is not permitted to respond to an examiner's treatment of its submission.

Supplemental Examination

A patent owner may request supplemental examination of its own issued patent to consider, reconsider or correct information believed to be relevant to patentability and to head off a future unenforceability challenge. The request for supplemental examination may address any of the conditions for patentability. Information eligible for consideration is not limited to patents and other printed publications. If a substantial new question of patentability is raised by one or more items of information, the Patent Office will order an ex parte reexamination of the patent.

A patent will not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately reconsidered or was incorrect in a prior examination of the patent if the information was considered, reconsidered or corrected during a supplemental examination. This immunity, however, does not apply to (i) allegations pled in a civil action or set forth with particularity in a notice to the patentee pursuant to an abbreviated new drug application under the Food, Drug, and Cosmetic Act, before the date of the request for supplemental examination or (ii) any defense raised in a patent enforcement action that is based on the information considered, reconsidered or corrected unless the supplemental examination and any resulting ex parte reexamination is completed before the action is brought.

The Patent Office fees associated with a request for supplemental examination are sizable. The filing fee is $5,140, and the reexamination fee is $16,120. If the Patent Office decides that the information does not raise a substantial new question of patentability, no ex parte reexamination proceeding will be ordered and the patent owner will receive a refund of the reexamination fee.

AIA Trial Proceedings

On September 16, the current inter partes reexamination procedures will be replaced with two different procedures for third-party-initiated post-grant review of a patent: post-grant review (PGR) and inter partes review (IPR). A new post-grant review procedure specific to "covered business method patents" (CBM) also will be established.

a.  Post-Grant Review (PGR)

Under this procedure, a newly issued patent can be challenged by a third party on almost any ground of patentability, on the basis of diverse types of prior art, during the first nine months following issuance.

A PGR proceeding can be instituted by a third party only within the first nine months after a patent issues or reissues. Only those patents issuing from applications subject to first-inventor-to-file provisions ("FITF patents") are eligible for PGR. FITF goes into effect for new applications filed on or after March 16, 2013. Under PGR, patent claims may be challenged on any ground under Sections 101 (patentable subject matter), 102 (novelty), 103 (obviousness) and 112 (written description, enablement – but not best mode). The bases for patentability challenges are not limited to prior art patents or printed publications. To satisfy the standard of proof requirement to initiate a PGR proceeding, the petitioner must demonstrate that at least one of the patent claims is more likely than not unpatentable. The Patent Office fee for a petition to institute a PGR is $35,800.

b.  Inter Partes Review (IPR)

Under this procedure any patent can be challenged by a third party for anticipation or obviousness more than nine months after issuance, based on prior art patents and publications.

An IPR proceeding can be filed nine months after the later of patent issuance or the conclusion of a PGR proceeding. All patents, both first-to-invent patents and FITF patents, are eligible for IPR. A third party may request cancellation of patent claims only on the grounds of novelty (Section 102) or obviousness (Section 103). The request can only rely upon prior art patents and printed publications.

The standard for initiating IPR review requires the petitioner to demonstrate a reasonable likelihood that the petitioner would prevail as to at least one of the claims challenged. As compared with the more likely than not standard for a PGR proceeding, the standard of proof for an IPR proceeding is lower. When the IPR standard is met, the Patent Trial and Appeal Board will institute a trial on a claim-by-claim basis and a ground-by-ground basis. Discovery, including testimony and document production, will be permitted. The trial will be completed within one year from institution, although this may be extended by up to six months for good cause.

A petition for IPR review can only be filed by a third party who has not previously filed a civil action challenging the validity of a claim in the patent. The petition must be filed after the later of (i) nine months after the grant of a patent or issuance of a reissue patent or (ii) the date of termination of any post-grant review of the patent. In the case where the third party has been served with a complaint for patent infringement, the petition must be filed within one year of service. The Patent Office fee for a petition to institute an IPR proceeding is $27,200.

c.  Covered Business Method Patent Review (CBM)

Under this procedure, a litigation party with an accused financial product or service can request review of a covered business method using a procedure similar to IPR, and, if granted, the litigation may be stayed and estoppel will attach.

All "covered business method patents" are eligible for CBM review. A covered business method patent is generally defined in the AIA as a method or corresponding apparatus for performing data processing or other operations for a financial product or service that is not a technological invention. The Patent Office has provided high-level guidance as to the boundaries of this definition, although it is expected that future CBM proceedings will provide further clarity.

A petition for CBM review may only be requested if the petitioner is sued or charged with infringement and the petition is filed after the nine-month period during which a PGR petition could be filed. The Patent Office fee for the petition to institute CBM review is $35,800.

d.  Estoppel

Upon termination of any one of these three proceedings, estoppel attaches in that a petitioner may not subsequently request or maintain another post-grant review proceeding before the Patent Office with respect to any claim on any ground raised that reasonably could have been raised in that earlier proceeding. Likewise, the petitioner may not assert in district court or at the International Trade Commission (ITC) that a claim is invalid on (i) any ground that the petitioner raised in any previous post-grant review proceeding and (ii) any ground that reasonably could have been raised with respect to an earlier PGR/IPR proceeding.

Also, the Patent Owner is estopped from taking any action inconsistent with an adverse judgment, including obtaining a patent having a claim that is not patentably distinct from a finally refused or canceled claim.


The AIA and rules effecting its implementation are intended to improve the U.S. patent system, including Patent Office procedures for issuing and maintaining stronger patents. Indeed, these procedures include a number of alternatives to the courtroom for third parties to challenge the issuance and maintenance of patents as well as for patent owners to strengthen their patent position. However, before engaging in any one of these actions, there are a number of requirements and restrictions, and cost, risk and estoppel issues that should be considered.

Joseph A. Capraro Jr. is a Partner in Proskauer's Patent Law and Intellectual Property Groups. He is also Head of the Boston office, where he leads the patent and trademark prosecution and technology licensing groups.

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