The America Invents Act (previously called the Patent Reform Act of 2011, “Act” hereinafter) was introduced in the U.S. Congress on January 25, 2011, was passed by the Senate on March 8, 2011, and, with some differences, was passed by the House on June 23, 2011. If it becomes law, the Act will make significant changes to the U.S. patent system. (This article is based on the most recent version as placed on the Senate Calendar on June 28, 2011. That version is viewable at http://www.gpo.gov/fdsys/pkg/BILLS-112hr1249pcs/pdf/BILLS-112hr1249pcs.pdf.) One highlight of the Act is that it creates new procedures permitting a member of the public who is not the patent applicant/owner (“third party” hereinafter) to contest the validity of a patent or patent application with the United States Patent and Trademark Office (“PTO”). This article surveys the existing options for opposing the granting of a patent other than litigation, presents an analysis of the options that will likely become available under the Act, and provides guidance on these options.

 

A patent application is to be allowed only if it meets the requirements for patentability: subject matter of a type that may be patented, utility, novelty, non-obviousness, sufficient disclosure to support the claims (including best mode), and definiteness of the claim language (35 U.S.C. §§ 101-103 and 112). The task of examining a patent application is assigned to an examiner of the PTO, with whom the applicant corresponds. The purpose of the correspondence is to allow the applicant due process in responding to potential barriers to eligibility for patent protection identified by the examiner. After a patent has issued, it may be returned to the jurisdiction of the PTO for reconsideration of its patentability or eligibility under certain circumstances, such as where the patentee seeks reassurance of the patent to cure some defect, or a reexamination.

 

At present the involvement of third parties in the examination process prior to issuance is restricted. In a post-issuance proceeding, a third party is permitted a greater role, although still with limits.

 

 

Under current law, the following procedures are available to a third party seeking to intervene:

 

1. Public use proceeding under 37 CFR § 1.292 (MPEP 720)

 

2. Protest under 35 U.S.C. § 122(c) and 37 CFR § 1.291 (MPEP 1900)

 

3. Third-party submissions under 37 CFR § 1.99 (MPEP 1134.01)

 

4. Citation of prior art under 35 U.S.C. § 301 (MPEP 2202)

 

5. Ex parte reexamination under 35 U.S.C. § 302 (MPEP 2209)

 

6. Inter partes reexamination under 35 U.S.C. §§ 311 -318 (MPEP 2600)

 

7. Interference under 35 U.S.C. § 135(a) (MPEP 2300)

 

The first three are pre-grant options, and the next three are post-grant options. The last one --- interference --- may be initiated between two patent applicants, but is most commonly between an applicant and a patentee.

 

The first three are limited. In a public-use proceeding a third party asserts that the invention was for sale or in public use more than one year before the application filing date. In a protest, a third party relies on prior-art patents and printed publications to challenge an applicant’s claims of patentability. Both types of proceedings, however, must be initiated before the patent application is published, or alternatively are permitted only with the applicant’s written consent. The third procedure permits a third party to submit patents and printed publications that it considers relevant to an application’s eligibility; the third party is not permitted, however, to submit any arguments, comments, or other information; it may submit a maximum of ten documents, and must do so within two months of publication of the application.

 

With the fourth option, prior art, with an explanation of its relevance, may be submitted to be placed in the patent file. This does not result in any action by the PTO, and thus merely makes the prior art and the third party’s interpretation of its relevance available to the rest of the public.

 

By contrast, ex parte reexamination, the fifth option, can be requested by any person at any time during the period of enforceability of a patent, on the basis of prior art patents or printed publications. This procedure requires a showing of a “substantially new question of patentability,” i.e., one that was not addressed during a previous examination (or previous reexaminations) of the invention. A third party’s involvement in this case, however, is limited to submitting materials to support the request for ex parte reexamination, and a reply to any response filed by the patentee. However, once the PTO authorizes the institution of the proceeding, the patent will be fully re-examined based on those submitted materials and any additional prior art found by the examiner. It should be noted that the re-examination must be handled by a different examiner from the one who allowed the patent originally.

 

If inter partes re-examination, the sixth option, is requested, the requester’s participation continues through the entire process, and the third party is permitted to file comments to each response filed by the patentee.

 

The interference proceeding is also worth noting. An applicant who is aware of an issued patent containing a claim to the applicant’s invention may present an identical or nearly identical claim to initiate an interference proceeding; creating a priority contest between the applicant and the patentee. While the central issue is always which party made the invention first, it is possible for one party to attack the patentability of the invention to the opponent on other grounds, including prior art, or insufficient disclosure in the opponent’s specification.

 

 

After the Act is finalized and goes into effect, the following changes or new procedures likely will be available:

 

1. First, under the Act, the U.S. patent system will switch from the first-to-invent standard to the first-to-file standard that is used in one form or another in most patent systems, and under this standard a priority of invention will not be relevant for applications filed after the Act goes into effect. Interference proceedings will not be available for new applications. It will, however, be possible to petition for a derivation proceeding to show that another applicant with an earlier filing date actually derived the invention from the party who petitioned for the proceeding.

 

2. Pre-issuance submissions by third parties under 35 U.S.C. § 122(e) (expanding the current third-party submissions procedure).

 

3. Post-grant review under 35 U.S.C. §§ 321-330 (new procedure).

 

4. Inter partes review under 35 U.S.C. §§ 311-320 (replacing inter partes reexamination).

 

The pre-issuance submission procedure is a pre-grant option, while the last two would be initiated post-issuance. A summary of the full list of options listed in order of the filing timeframe is given in Table 1.

 

The modified pre-issuance submission procedure extends the time window during which a submission may be made. Instead of the present two months from the publication of the patent application, the public will have six months from publication, or from the first rejection, whichever is later. Nonetheless, what a third party can do before the allowance of a patent application is largely limited to submitting patents and publications to the PTO along with an explanation of their relevance. The submitted materials will be placed in the patent application file whether or not they are considered or used by the examiner to formulate a rejection. To use this procedure at all, it is necessary to monitor patent publications, so that the submission can be made within the statutory time limit.

 

Similarly, the procedure for post-issuance submission of documents for placement in the PTO file of a patent (under 35 U.S.C. § 301) has been expanded. Now the public is permitted to submit not only patents and publications, with an explanation of their relevance to one or more of the patent claims, but also statements made by the patent owner in the PTO or in a Federal court about the scope of any of the patent claims. While such statements at present are generally a matter of public record, having them placed in the PTO file of the patent to which they relate should reduce the effort currently required to locate such statements.

 

With the passing of the Act, inter partes reexamination will be replaced with the new inter partes review procedure and with post-grant review.

 

As a matter of reference for those familiar with oppositions in the European Patent Office (EPO), this process will be somewhat to a post-grant review proceeding. It can be requested by any member of the public by petition, within nine months from patent issuance, on any ground that could be raised under 35 U.S.C. §282(2) or (3) relating to patent invalidity --- on any ground, that is, that could be raised in an infringement litigation in court. A new Patent Trial and Appeals Board (“Board” hereinafter) of the PTO will be tasked with conducting these proceedings. During the proceeding, after the patent owner submits a response to the third party’s petition, the parties may request an oral hearing.

 

It should be noted that the third party in this case needs to demonstrate in the petition that it is more likely than not that at least one of the challenged claims is unpatentable; it is not enough just to raise a substantial new question about patentability. Unlike litigation, the third party is only required to show unpatentability by a preponderance of the evidence (in litigation, invalidity must be shown by clear and convincing evidence). The third party may obtain discovery of certain relevant evidence from the patentee, within limits (which may in part be established by new regulations). The patent owner may file a motion to cancel or replace existing claims before the Board issues a final decision. A decision is must be issued within one year from when the PTO notices the institution of the proceeding.

 

This post-grant review option requires early filing, permits broad grounds for filing, and provides early decisions. Thus it promotes early identification and investigation of issues of patentability that might not have been sufficiently examined by the PTO.

 

Finally, an inter partes review proceeding (new proceeding) is somewhat similar to an inter partes reexamination proceeding (old proceeding), which it replaces. It can be requested by any member of the public up to the end of the period of patent enforceability, but only after nine months from patent issuance, and after the termination of any post-grant review that may have been conducted for the patent. In addition, the petition must be based on patents and printed publications. However, an inter partes XXX proceeding requires a showing that there is a reasonable likelihood that one or more claims are unpatentable. Furthermore, it largely tracks a post-grant review proceeding regarding what happens after the PTO authorizes the institution of the proceeding. Specifically, the Board is tasked with conducting such a proceeding, and it is expected to issue a final decision within one year from when the PTO notices the institution of the proceeding. Therefore, both the new inter partes postgrant options are geared towards speeding up post-grant patent reviews.

 

Like ex-parte reexamination, these new inter partes post-grant options may lead to the amendment and cancellation of the claims in an issued patent, and the final decision by the PTO is subject to appeal only to the Court of Appeals for the Federal Circuit. Otherwise, however, these options are markedly different from the ex parte reexamination. Specifically, a post-grant review proceeding may be requested on a variety of grounds related to invalidity, not just those based on patents and printed publications. It apparently may even be requested based on questions which have been raised during previous examination, as long as the third party can demonstrate that it is more likely than not that at least one of the challenged claims is unpatentable. In addition, both inter partes options are expected to provide a final decision within one year from commencement of the proceeding.

 

These inter partes procedures likely will require much more money and effort from the third-party than an ex parte reexamination, but at the same time will allow the third-party to participate throughout the proceeding, and may provide faster results.

 

While the inter partes nature of these procedures introduces a complexity similar to litigation, the new post-grant inter partes proceedings should, if they can be conducted as promised by the statute, be faster than litigation. The lower burden of proof may also be attractive to third parties. In addition, the Board which is tasked with conducting the post-grant inter partes proceedings will presumably consist of judges similar to those who now make up the Board of Patent Appeals and Interferences in terms of their technical expertise and experience in patent matters. Furthermore, the post-grant inter partes proceedings will permit at least some discovery, although it is unlikely that the discovery available will approach what can be had in litigation.

 

However, the new inter partes procedures also entails risks. As with existing inter partes re-examination, a third party seeking intervention is estopped from later raising, with the PTO, in the International Trade Commission, or in court, any issue that that party did raise, or reasonably could have raised, in the post-grant or inter partes review. It is not clear that a party would be permitted to revisit an issue based on newly-discovered evidence. The limited discovery provided for in the PTO therefore might have the result of depriving a party of the full opportunity to argue a given issue because of being unable to obtain full discovery on it.   

 

Associate of FITZPATRICK, CELLA, HARPER & SCINTO Agatha H. Liu has engaged in all aspects of patent prosecution in computer devices and computing methods. And her research findings can be found in peerreviewed journals. 

 

Partner of FITZPATRICK, CELLA, HARPER & SCINTO Leonard P. Diana has extensive experience in client counseling and patent prosecution. He has also engaged in patent litigation at the trial and appellate levels.