America Invents Act: New Opportunities for Challenging the Validity of US Patents

In this, the second in a series of three posts commissioned from leading US intellectual property practice Faegre & Benson on the recently-enacted America Invents Act (AIA), Jason Kraus and Walt Linder examine the impact of the AIA on challenges to a patent's validity.  This is what they say:

Granting office -- and battleground
for patent validity

"Unlike European patent practice, current US patent law does not provide for post-grant opposition. Instead, the ex parte and inter partes reexamination procedures are used to challenge the validity of granted patents in the US Patent Office. Although the strategic use of these procedures has become increasingly common in the course of US patent litigation, they have characteristics that can limit their effectiveness. One such limitation is that only patents and other printed publications can be used as the basis for validity challenges. Before granting reexamination, the Office first makes a threshold determination as to whether a “substantial new question of patentability” exists. These procedures are carried out before a centralized unit of skilled examiners, but the time frames for resolving granted reexaminations, and inter partes reexaminations in particular, have steadily increased. 

The AIA modifies US patent practice by providing for post-grant review. This new post-grant review expands the available bases for validity challenges and is structured to offer a more efficient and effective review mechanism prior to litigation. While this new post-grant review proceeding is currently receiving much attention, with the exception of certain business method patents for which post-grant review is available on September 16, 2012, post-grant review is available only for granted patents based on applications filed on or after March 16, 2013. 

In the meantime, procedures similar to current inter partes reexamination remain available under the new name “inter partes review.” One significant change to the new inter parte review, which is already applicable to newly-filed inter partes reexaminations, is the determination threshold for the grant of a petition has changed from a “substantial new question” to a “reasonable likelihood that the petitioner would prevail.” Ex parte¬ reexamination remains in place and is substantially unchanged. 

Bases for Post-Grant Review 

Any ground relating to invalidity, including novel or unsettled legal questions important to other patents, can be used as the basis of a petition for post-grant review. Challenges based on assertions that the patent is invalid because the invention was on sale or in public use by the inventor or third parties, can now be raised in and decided by the Patent Office. Prior art patents and printed publications can also be used as bases for post-grant review. 

Timing 

A petition for post-grant review must be filed within nine months after the grant of the patent. Post-grant review is the only available review procedure during this nine month time period. A petition for inter parte review cannot be filed until after the nine month time period available for filing a post-grant review petition, or until after the termination of any instituted post-grant review. Furthermore, a party is barred from filing for post-grant review if it previously filed a civil lawsuit challenging the validity of the patent. 

By law, the Office must make an initial determination of whether to grant post-grant review within three months of the petition filing. Final determination must be completed within one year, but can be extended by six months. 

Procedure 

Post-grant review proceedings will be conducted by a new Patent Trial and Appeal Board. After a challenger files a post-grant review petition, the patent owner has an opportunity to file a preliminary response before the Office acts on the petition. The board can grant the petition only if the petitioner demonstrates “that it is more likely than not” that one of the challenged claims is unpatentable. During the proceeding, the petitioner is afforded substantial opportunity to participate in the post-grant review process. And similar to a European opposition procedure, the patent owner has an opportunity to cancel claims and present new claims for the board’s consideration. 

Estoppel 

Following a final decision in a post-grant review proceeding, the petitioner cannot maintain before the Patent Office, or raise in any civil lawsuit, any invalidity ground “that the petitioner raised or reasonably could have raised during that post-grant review.”

The first blog-post in this series, "America Invents: what do litigators need to know?", can be read on PatLit here.