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Avoiding the "Fiscal Cliff" May Result in Corrections to the America Invents Act that Are More Than "Technical"

CIPA Journal
December 2012

Tridico Ph.D., Anthony C.

Article

Authored by Anthony C. Tridico, Ph.D. and Daniel A. Lev, Ph.D.

On Friday, November 30, 2012, Lamar Smith (R-Texas) of the U.S. legislature introduced a bill "[t]o improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code." Although most of the provisions of the proposed bill, H.R. 6621, are mere "technical corrections" to the Patent Act, there are two substantive changes that may catch an unwary patent applicant by surprise. First, the bill proposes eliminating a nine-month "dead zone" during which certain patents cannot be challenged in a contested proceeding. Second, H.R. 6621 proposes severely curbing the term of the few remaining pre-GATT pending applications that currently are entitled to a term of 17 years from issuance.  

Eliminating the Post-Grant "Dead Zone"

The AIA created a so-called "dead zone"—a period in which a pre-AIA patent, including a reissue patent, cannot be challenged by any contested inter partes proceeding, neither IPR nor PGR. The reason for this "dead zone" is that the AIA created a two-track system wherein the IPR and PGR tracks are placed in series, not in parallel. Like European oppositions, PGRs must be filed during the first nine months after a patent is granted. Under the current law, an IPR cannot be filed until the later of (a) the expiration of the nine-month post-grant window or (b) the termination of any PGR related to the patent. As of September 16, 2012, IPR replaced inter partes reexamination for all patents, but PGR is only available for a "first-inventor-to-file patent" with an effective filing date after March 16, 2013, when the AIA takes full effect. Therefore, for patents granted on applications filed prior to March 16, 2013, a third party cannot initiate an IPR for nine months after the grant date and also cannot initiate a PGR. Section 1(d) of H.R. 6621 eliminates this "dead zone" by providing that the AIA provision setting the waiting period for IPR filing (35 U.S.C. § 311(c)) does not apply to pre-AIA patents.

The "dead zone" provision of H.R. 6621 also proposes to eliminate an obscure AIA provision that bars PGRs for original or narrowed reissue patent claims if the PGR petition is filed after the nine-month post-grant window that applies to the original patent. In other words, if a reissue patent issues with original or narrowed claims after the expiration of the nine-month window for the original patent, which is a likely scenario given the typical pendency of a reissue patent application, those original and narrowed claims currently may not be subject to a PGR. H.R. 6621 would make those claims subject to PGR proceedings.

The post-grant "dead zone" has been recognized since the passage of the AIA. But in the push to pass the bill before Congress turned to other matters, the AIA was passed without correcting the "dead zone." Therefore, although this is a substantive change in a bill that purports to be a "technical correction," it is not considered controversial.

Curbing the Term of Pending Pre-GATT Applications

A more controversial substantive change introduced by Section 1(m) of H.R. 6621 is the proposal to severely curb the term of the remaining pre-GATT applications pending with the U.S. Patent Office. In 1994, the U.S. enacted the Uruguay Round Agreements Act, implementing the GATT 20-year patent term for any patent filed on or after June 8, 1995. Pre-GATT patents and patent applications are entitled to a term that is the greater of 20 years from the earliest filing date (the GATT rule) or 17 years from issuance (the old U.S. rule). Today there are reportedly about 200 pending pre-GATT applications. H.R. 6621 would limit the term of any of those applications that remain pending on the one year anniversary of the enactment of H.R. 6621 to be 20 years from the earliest filing date.

The vast majority of patent applicants do not have pre-GATT applications pending at the U.S. Patent Office and, thus, will not be affected by Section 1(m) of H.R. 6621. Any applicants with pre-GATT applications pending, however, should take heed and, if Section 1(m) passes, try to obtain issuance of your pre-GATT applications within a year. It could mean the difference between a patent with a 17 year term and a patent with a term of only a few years, or no term at all.

Other Provisions

The remaining provisions of H.R. 6612 generally are non-substantive "technical corrections" to the AIA. One noteworthy provision is Section 1(a), which would apply to any patent law suit, and not just post-AIA law suits, the AIA provision stating that a party’s failure to obtain the advice of counsel regarding alleged patent infringement cannot be used in court to prove willful infringement or intent to induce infringement. Another noteworthy provision is Section 1(f), which provides that an applicant must comply with the oath or declaration provision of the Patent Act before paying the issue fee, rather than before the Patent Office can issue a Notice of Allowance, as the current law states. H.R. 6621 also proposes striking Section 373 of the Patent Act, which provides that the Patent Office cannot accept an international application designating the U.S. if it was filed by someone who was not qualified to file a U.S. patent application under Section 111, i.e., someone other than an inventor.

Additionally, H.R. 6621 proposes to reorganize and clarify certain AIA provisions related to derivation proceedings. Section 1(k) of H.R. 6621 would clarify certain AIA provisions that apply to derivations by reorganizing them into subheadings and also by adding a definition of the term "earlier application." In addition, Section 1(k) of H.R. 6621 proposes to apply to interferences declared after September 15, 2012, the pre-AIA provisions of the Patent Act governing the Board of Patent Appeals and Interferences and appeals to the Court of Appeals for the Federal Circuit, namely Sections 6, 141, and 1295(a)(4)(A).

As with the AIA, the timing of H.R. 6621, whether coincidental or calculated, presents a potential issue. Congress is currently preoccupied with the looming "fiscal cliff," which is the direct result of the "debt ceiling" budgetary negotiations that almost derailed passage of the AIA. However, as a "technical corrections" bill, Congress is not expected to hold hearings on H.R. 6621 and it could pass without much fanfare or debate—if Congress can deal with the "fiscal cliff" before the current session ends.

Originally printed in CIPA Journal. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.