Top Five Provisions in the PATENT Act Impacting AIA Post-Grant Proceedings

On June 4, 2015, the Senate Judiciary Committee approved the patent reform bill known as the PATENT Act. While the Act includes provisions affecting patent litigation in district courts, such as fee-shifting measures and new pleading standards, it also impacts AIA post-grant proceedings before the USPTO.  Here are the top five provisions affecting AIA proceedings:

1. Changing the Claim Construction Standard - Although the USPTO has traditionally applied the “broadest reasonable interpretation” standard, the Act applies the Phillips standard used by district courts to interpret claims as they would be understood by a person of ordinary skill in the art. The USPTO would also have to consider any prior district court constructions, and each party would be bound in subsequent proceedings by claim construction positions that the USPTO adopts.

1. Improving the Institution Decision - The Act allows a patent owner to submit new testimonial evidence with its preliminary response and allows the petitioner to seek leave to reply to new issues raised in the preliminary response. Also, the panel adjudicating the AIA proceeding would include no more than one judge who participated in the institution decision.

1. Applying One-Year Time Bar for IPRs on Claim-by-Claim Basis - Under the AIA, a petitioner may not file a petition more than one year after being served with a complaint alleging infringement of the patent. The Act precludes institution only on those patent claims for which infringement is alleged.

1. Allowing Live Testimony - The Act gives parties the right to have testimony, including cross examination, heard by the USPTO where the testimony concerns genuine issues of material fact, conflicting expert opinions, or issues of witness credibility.

1. Preventing Gamesmanship - The Act requires the USPTO to impose obligations on attorneys and unrepresented parties similar to Rule 11 of the Federal Rules of Civil Procedure. The USPTO would also be able to deny institution if institution would not serve the “interests of justice,” including such factors as whether the grounds of unpatentability are substantially the same as those in prior district court or USPTO proceedings and whether there is a pending USPTO proceeding involving the same patent.

The Act also includes other provisions such as “placeholder language” for changes to claim amendments requiring proposed amendments to be made in the first paper following, and within 30 days after, institution. The amendment would have to narrow the claim and respond to a ground of unpatentability. The burden to show that the substitute claim is unpatentable would be a preponderance of the evidence.