© Kolisch Hartwell 2013 All Rights Reserved, Page 1 America Invents Act (AIA) Implementation in...

© Kolisch Hartwell 2013 All Rights Reserved,

America Invents Act (AIA)Implementation in 2012

Peter D. SabidoIntellectual Property Attorney

Kolisch Hartwell, [email protected]

February 15, 2013


Overview• Inventor’s Oath or Declaration

• Citation of Written Statements in Patent File

• Inter Partes Review

• Post-Grant Review

• Third Party Submission of Prior Art

• Supplemental Examination

• Transitional Program for Covered Business Method Patents

• Priority Examination for Important Technologies


Inventor’s Oath or Declaration (§ 4)

• Assignee can be the applicant Still need inventor’s oath or declaration

• Assignments can be used Must include required oath or declaration statements

• Postponement of filing of oath or declaration Until application is otherwise in condition for allowance

• Substitute statement in lieu of oath or declaration• Defective oath or declaration is curable

Patent not invalid or unenforceable if cured


Citation of Written Statements in Patent File (§ 6)

• For issued patents• Any person may file a written submission with:

Prior art consisting of patents or printed publications Statements of patent owner filed by the patent owner in a proceeding

regarding claim scope

• Statements must identify: Forum and proceeding in which patent owner filed statement Specific papers submitted that contain the statements How each statement is a statement regarding claim scope

• Explanation required Pertinence and manner of applying to at least one claim


Post Grant Review (§ 6)• May be filed starting September 16, 2012

Only business method patents and patents involved in interferences

Can file for any patent as of March 16, 2013

• Various statutory ground(s) based on: Patents and printed publications Other factual evidence and expert opinions

• Must be filed: Before filing a civil action challenging validity of patent Within nine months of the patent grant


Post Grant Review (§ 6) [contd.]

• Granted if: “More likely than not” that at least one of challenged claims is

unpatentable Raises a “novel or unsettled legal question” that is important to other

patents or patent applications

• Subsequent civil action challenging validity of patent automatically stayed until: Patent owner moves court to lift stay Patent owner files action or counterclaims for infringement Petitioner moves court to dismiss action

• No stay of motion for preliminary injunction Infringement action filed within 3 months of patent grant date


Post Grant Review (§ 6) [contd.]

• Estoppel with respect to any ground raised or reasonably could have raised: USPTO proceeding Civil action ITC proceeding

• No estoppel if settled before decision on merits• Patent owner may file motion to amend patent:

Can cancel, amend, or substitute claims Cannot enlarge scope or add new matter

• Petitioner may appeal written final decision to the Federal Circuit


Inter Partes Review (§ 6)

• Replaces existing Inter Partes Reexamination Procedure• Available for all patents• 35 U.S.C. § 102 or § 103 grounds based on patents and

printed publications• Must be filed:

Before filing a civil action challenging validity of patent Within one year of being served with infringement complaint After later of nine months after grant date or termination of post-

grant review

• Granted with “reasonable likelihood” that the third party will prevail


Inter Partes Review (§ 6) [contd.]

• Same automatic stay as post grant review• Same estoppel as post grant review• Patent owner may file motion to amend patent• Petitioner may appeal written final decision to the

Federal Circuit


Third Party Submission of Prior Art (§ 8)

• Filed for pending patent applications• Documents:

Patents Published patent applications Other printed publications

• Explanation of relevancy• Must be filed prior to earlier of:

Notice of allowance Later of six months after publication date or the date of a first

Office action on the merits

• No service requirement


Supplemental Examination (§ 12)

• For patent owner after patent has issued• Filed at any time during enforceability period of patent• Any information in writing “believed to be relevant to the

patent” Limit of twelve items per request

• Ex parte reexamination ordered if “substantial new question of patentability”

• Proceed under ex parte reexamination procedures Except for patent owner statement


Supplemental Examination (§ 12) [contd.]

• Effect Patent not unenforceable on basis of conduct relating to

information if information was considered, reconsidered, or corrected during supplemental examination

• Exceptions Prior allegations in civil action or FDCA notice Defense in patent enforcement actions

o Unless supplemental examination (and any reexamination ordered) concluded before action brought


Covered Business Method Patents (§ 18)• Specific post-grant reviewing proceeding • Covered business method patents:

Method or apparatus that performs data processing or other operations used in practice, administration, or management of a financial product or service

Does not include patents for “technological inventions”

• May be requested only if sued for patent infringement• Various statutory grounds based on published and non-

published evidence• Estoppel only in other USPTO proceedings• Program expires on September 16, 2020


Priority Exam for Important Technologies (§ 25)

• Prioritization of examination of applications for products, processes, or technologies that are important to the national economy or national competitiveness

• As of February 5, 2013, the USPTO has not released any information regarding implementation


Peter D. Sabido Intellectual Property Attorney

Kolisch Hartwell, P.C.

520 SW Yamhill Street, Suite 200

Portland, Oregon 97204

(503) 224–6655

[email protected]

© Kolisch Hartwell 2013 All Rights Reserved, Page 1 America Invents Act (AIA) Implementation in...

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