America Invents Act Implementation:Countdown To First-To-File

August 2012

The America Invents Act ("AIA"), which went into effect September 16, 2011, has brought, and continues to bring, some of the most significant changes to the U.S. patent system since the first U.S. patent was issued in 1790. Under the AIA’s rolling implementation, we have already seen new law go into effect, on the AIA’s enactment date, repealing the "Best Mode" defense, changing the nature of "false patent marking" claims, and incentivizing "virtual patent marking." Next month will see significant changes to the way issued patents are challenged in the U.S. Patent and Trademark Office ("USPTO"). Finally, next March will see the U.S. go from being a "first to invent" country to a "first to file" country. An overview of many of these changes was covered in an earlier Client Alert. See "SWEEPING PATENT LAW REFORM IS COMING: WILL YOU BE READY?" (September 2011). In this Alert we look a little closer at the changes yet to come.

Challenging Patents In A Post-AIA World:

It is currently possible to challenge an issued patent under a process known as reexamination. In this process, the USPTO reconsiders the original decision to grant a patent in light of information provided by the party requesting reexamination. Currently, to qualify for reexamination, the submitted information must be in the form of printed publications and/or prior patents, and the request to reexamine a patent is only granted upon a showing by the requesting party that there is a "substantial new question of patentability" as to the patent being challenged. Presently, Reexamination comes in two forms: Ex parte reexamination, in which the requesting party is involved only in instituting the reexamination; and inter partes reexamination, in which the requesting party has more of an adversarial role and, accordingly, greater opportunity to comment during the process.

Under the AIA, ex parte reexamination will continue on unchanged and may be requested at any time. On the establishment of a "substantial new question of patentability," the case will be re-opened for ex parte reexamination. Not so for inter partes reexamination.

As of September 16, 2011, the standard for invoking an inter partes reexamination became higher than the previously applicable "substantial new question of patentability" standard. Now the requesting party must meet a greater threshold requirement by showing that they are likely to prevail with respect to at least one challenged claim.

And on September 16th of this year, inter partes reexamination will cease to exist entirely in favor of "inter partes review." Inter partes review, which will have a lot of the same character as inter partes reexamination, may be requested as to any issued patent, whether filed before or after the March 2013 implementation of the first-to-file system. However, inter partes review cannot be requested until a 9 month window after the patent has issued closes. This will leave a 9 month "black-out" period for any patents issued from September 16th onward and which were filed under the old first-to-invent regime where neither inter partes review nor post grant review (discussed below) are available.

Post grant review, which also comes online on September 16th of this year, promises to be much more powerful than ex parte reexamination or inter partes review. This is because the basis for a post grant review request is not limited to invalidity on the grounds that a patent’s claims are obvious or anticipated by prior patents or printed publications, but also includes nearly every other notable statutory basis for patent invalidity, including lack of enablement or written description of the invention, indefiniteness of the claims, evidence of a prior sale or invalidating public disclosure, or non-patentable subject matter under Section 101 of the Patent Act. However, this basis to challenge will only be available against patents granted on applications filed under the new first-to-file regime; i.e., filed on or after March 16, 2013.

Get To The Patent Office First:

Just a little over 6 months from now, the last, most significant change to the U.S. patent system will take place. On March 16, 2013, the U.S. will become a "first-to-file" country. Historically, patent granted in the U.S. have gone to the first to invent the claimed subject matter. Where separate inventors were working on similar inventions at the same time, the "first-to-invent" system could sometimes result in interference proceedings at the USPTO to determine who was the first to come up with the claimed invention. Fortunately, the AIA guards against a party getting a patent from an earlier-filed application the subject matter of which was obtained from the later-filing inventor. However, this will require the inventor to either institute a "derivation proceeding" in the USPTO or file a case in federal District Court ( the full effect and requirements of a derivation proceeding are not yet completely known).

Related to our move to a "first-to-file" country, the novelty provision of the Patent Act will change to create an absolute bar to patentability if the claimed invention of a patent application was "patented, described in a printed publication, or in public use, on sale, or otherwise available to the public" anywhere in the world before the patent application’s effective filing date. This is a major transformation in at least two respects: First, with respect to activities outside the U.S., the law before the AIA only limited as a bar to patentability foreign patents and printed publications. Other activities, such as public use, sale or other "public availability" outside of the U.S. were not considered. After March 16th of next year that will no longer hold true. Second, because the law before the AIA permitted applicants in some situations to prove that they came up with their inventions before the effective date of a cited patent or printed publication, there was recourse if another entity independently developed the same invention after you but beat you to the USPTO with a patent application directed to the subject matter. Again, this will not be true when, come March 16, 2013, what will matter is when you filed your patent application, and not when you came up with your invention.

The combination of these changes to the law should encourage filing patent applications before March 16th if possible, in order to take advantage of the present "first-to-invent" system’s more limited view of foreign prior art and potential for proving an earlier date of invention than the date of a patent or publication cited against you by the USPTO. But if you don’t file until March 16th or later, the AIA’s changes to the U.S. patent system should encourage filing patent applications as soon as practicable, or risk the possibility that someone else – anywhere in the world – may have already filed an application disclosing subject matter that will keep you from getting a patent.

FOR MORE INFORMATION CONTACT:

Chris Mitchell, is a member in Dickinson Wright’s Ann Arbor office. He can be reached at 734.623.1906 or cmitchell@dickinsonwright.com.

John S. Artz, is a member in Dickinson Wright’s Troy office. He can be reached at 248.433.7202 or jsartz@dickinsonwright.com.

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