Contentious Proceedings at the USPTO Under the America Invents Act
This article summarizes each procedure and reviews some of their advantages and disadvantages. The chart below outlines aspects of the procedures, which will be available on September 16, 2012.1
|Preissuance Submission||Ex Parte Reexam||Post-Grant Review||Inter Partes Review|
|When?||Limited time after filing||After grant||No more than 9 months after grant||After 9 months from grant|
|Threshold Showing||N/A||Substantial new question of patentability||More likely than not that a claim is unpatentable or raises an important legal question||Reasonable likelihood of success|
|Estoppel||None||Issues raised or reasonably could have been raised by the petitioner: USPTO, district court, and ITC|
|Discovery/Evidence?||N/A||Declaration||Declaration and discovery|
|Speed Within USPTO||Case dependent||Many years||1 to 1½ years|
|Appeal||Only applicant can appeal||Both parties can appeal|
Preissuance submission provides a challenger with a low-cost opportunity to present prior art publications and comment on their relevance early in an application’s examination. This proceeding does not require a statement identifying the real party-in-interest and therefore allows a challenger to remain anonymous.
A preissuance submission, however, has disadvantages. First, the challenger has only one opportunity to present its comments, with no further rights to participate in prosecution. Therefore, the applicant could argue against the reference or amend the claims, and patent claims could issue that still pose problems for the challenger. Second, once the examiner considers the documents submitted, it is more difficult to use the same or similar documents in a future challenge, such as district court litigation. On the other hand, the preissuance submission procedure does not create any estoppel. A challenger may consider preissuance submission if, for example, the prior art anticipates the embodiment it wishes to practice, but should be very cautious in using this procedure.
Post-Grant Review and Inter Partes Review
The AIA creates a new opportunity to challenge a competitor’s patent immediately after grant. Challengers can file for post-grant review within nine months of a patent’s issuance. Post-grant review allows for challenges to a patent based on any ground of invalidity, including anticipation, obviousness, utility, patent eligibility, enablement, written description, and definiteness. To initiate post-grant review, a challenger must show that it is more likely than not that at least one claim is unpatentable.
Inter partes review will replace inter partes reexamination. A challenger may request inter partes review after the nine-month post-grant review period has expired and so long as no post-grant review proceeding is still pending. This procedure will offer fewer opportunities for challenge, specifically, only anticipation and obviousness on the basis of patents or printed publications. To initiate inter partes review, a challenger must show that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged in the petition.
Post-grant review and inter partes review also present a number of disadvantages. The real party-in-interest must be indentified in each proceeding. Each proceeding creates an estoppel against that party. The estoppel covers any issue that was raised or could have been raised by the petitioner, and applies to future proceedings at the USPTO, district court, or the International Trade Commission. Also, there likely will be much more limited discovery in post-grant review or inter partes review than in litigation. Thus, the challenger could be prejudiced by both limited discovery and the estoppel. Nevertheless, post-grant review or inter partes review could be an effective tool in clearing poor-quality patents from a competitive space for a more reasonable cost than litigation.2 If a challenger could not consider litigation due to the expenses involved, or if a challenger would be satisfied to take a license (if available) from the patentee if the USPTO challenge failed, post-grant review or inter partes review could be a useful option.
Finally, ex parte reexamination will continue without change. Like preissuance submission, it will not create an estoppel, but the opportunities to participate in the challenge are limited. Inter partes reexamination is still currently available, although the legal standard for initiating the proceeding has changed to a reasonable likelihood of success.
By creating new opportunities for challenge, the AIA will require even more thoughtfulness when assessing the competitive landscape. Each procedure has disadvantages and advantages that we recommend weighing carefully before choosing how to respond to a competitor’s patent.
1 Initially, only business method patents will be subject to post-grant review. For all other patents, only patents with an effective filing date of March 16, 2013, or later will be subject to post-grant review.
2 The proposed USPTO fees for post-grant review and inter partes review, however, are not insubstantial. The proposed fee for a post-grant review of 20 claims is $35,800. The proposed fee increases up to, for example, $44,750 for 21-30 claims. The proposed fees for inter partes review are also substantial. For example, the proposed fee for inter partes review for 20 claims is $27,200. The proposed fee increases up to, for example, $34,000 for 21-30 claims.
Rebecca M. McNeill practices client counseling and patent prosecution. She has a special interest in counseling clients on patent application filing and developing worldwide prosecution strategies. Ms. McNeill provides a full range of patent prosecution and counseling services to her clients and develops patent strategies in concert with clients’ business goals. Ms. McNeill has worked with biotech start-ups, research foundations, and larger, established pharmaceutical companies. She has considerable experience managing patent portfolios.