BizTech Law Blog

Part 2 - U.S. Patent Reform: Post Grant Review Proceedings

As noted in my previous post (Part 1: U.S. Patent Reform: First-to-File), the Leahy-Smith America Invents Act has been signed into law.  The America Invents Act has been sold as "the biggest change in the U.S. Patents System since the 1950s."  The hype, however, is far from reality – as the Act does not affect many of the fundamental tenants of U.S. Patent law. 

This is the second of multiple blog posts that will summarize the most significant changes created by the America Invents Act.  My previous blog post addressed the adoption of a "First-to-File" system.  Today, I will discuss "Post Grant Review Proceedings."

Post Grant Review Proceedings

Effective September 16, 2011, the Act increases the scope of the post grant review procedures available through the U.S. Patent Office.  These new post grant review procedures create additional ways to challenge the validity of a patent in the USPTO after the patent has been issued.

First, the Act sets up a nine month window after a patent issues in which third parties may submit prior art to the Patent Office anonymously.  The USPTO may then determine whether that prior art has a bearing on the patent's validity.

Second, the Act creates an eight year window in which third parties may request review of the validity of business method patents for financial products or services.  However, in order to invoke this procedure, you must be a defendant in an infringement action.

Third, the Act creates a supplemental examination proceeding in which a patent owner can request that the USPTO reconsider and correct an issued patent.  This supplemental examination procedure is designated to give patent owners the ability to clear the prosecution record to protect themselves against potential claims of inequitable conduct in subsequent litigation.

It is important to remember that these procedures supplement the existing re-examination procedures that already existed.  Nothing in the America Invents Act limits a party's ability to file for ex-parte or inter-parte's re-examination of a patent pursuant to the old rules.

Please contact me if you have questions regarding the America Invests Act.

Categories: Intellectual Property, Patents