June 17, 2015
Authored and Edited by C. Brandon Rash
On the heels of the Senate Judiciary Committee approving the PATENT Act, the House Judiciary Committee approved its own patent reform bill, known as the Innovation Act, on June 11, 2015. Several provisions in the Innovation Act impact AIA post-grant proceedings.
The Innovation Act includes several of the same changes regarding post-grant proceedings as the PATENT Act. For example, the Innovation Act changes the claim construction standard in AIA proceedings from the “broadest reasonable interpretation” standard to the Phillips standard used in district courts, and requires the USPTO to consider any prior district court constructions. The Act also allows the patent owner to submit new testimonial evidence with its preliminary response and allows the petitioner to file a reply to new issues raised in the preliminary response.
In IPRs and PGRs that result in a final written decision, the AIA estops petitioners from asserting grounds that the petitioner “raised or reasonably could have raised” during the proceeding in a later district court or ITC proceeding. The Innovation Act limits the estoppel in PGRs to the grounds petitioner “raised” in the PGR proceeding. The “raised or reasonably could have raised” estoppel would continue to apply in IPRs.
The Innovation Act also requires the petitioner to certify that (1) it does not own and will not acquire a financial instrument designed to hedge a drop in stock value as a result of the petition; and (2) it has not demanded a payment from the patent owner in exchange for a commitment not to file the petition, unless the petitioner has been sued for or charged with infringement of the patent.
Next, the Innovation Act sets forth certain PTAB institution decisions as precedential. In these decisions, the USPTO denied institution of IPRs under 35 U.S.C. § 325(d) based on the petition raising substantially the same prior art or arguments previously presented to the USPTO.
The AIA limits the scope of prior art in CBM review proceedings to § 102(a) art, which includes patents and printed publications that issued or published before the invention. The Innovation Act expands the scope of prior art to include § 102(e) prior art, which includes certain patents and application publications that issued or published after, but have an effective filing date before, the invention.
Lastly, the Innovation Act permits the USPTO to waive payment of the filing fee for CBM review proceedings.
Copyright © 2015 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.
Conference
Best Practices in Intellectual Property– A Decade of Dedication to IP Excellence
April 8-9, 2024
Tel Aviv
INCONTESTABLE® Blog
The Federal Circuit’s Heartfelt Affirmation of Everybody’s Right to Use “Everybody vs. Racism”
March 22, 2024
Federal Circuit IP Blog
March 21, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.