I. Prior to AIA, there were two primary ways for a third party to invalidate a patent in the patent office: A. Interference under 35 U.S.C. 135 & 37 C.F.R. 41.202, which was extremely limited, as it required: 1. Must have a patent application on file with claims drawn to the same invention as the patent; 2. Patent office must agree that the claims are the same; and 3. Must prove earlier invention and first to file won 90 percent or so of the time. B. Reexamination ex parte or inter partes 1. Ex parte under 35 U.S.C. 301-307 and 37 C.F.R. 1.501-1.570 for any patent, but you only get to participate pre-declaration of the reexamination and only grounds are unpatentability over a patent or printed publication 2. Inter partes under 35 U.S.C. 311-318 and 37 C.F.R. 1.902-1.997, for any patent filed on or after November 29, 1999 and only grounds were unpatentability over a patent or printed publication. II. UNDER AIA, THERE ARE SOME OLD AND NEW AND BETTER CHOICES A. REEXAMINATION: 1. Ex parte reexamination still exists and is essentially the same. 2. Inter partes reexamination is no longer available as of September 16, 2012. As of that date, you cannot bring an inter partes reexamination at all, even for previously filed applications. AIA Sec 7(e) and 7(e)(2)-7(e)(3). B. POST GRANT REVIEW (PGR): 1. A trial like proceeding in the patent office in front of three (3) patent office appeals judges. 35 USC 6(c). One petitions for review. 35 U.S.C. 322. Page 1 of 10
Page 2 of 10 Patent owner has an optional preliminary response to petition. 35 U.S.C. 323. 2. PTAB judges decide whether to invoke the PGR or not. a. Sufficient grounds. Post-grant review shall not be instituted for a ground of unpatentability, unless the Board decides that the petition supporting the ground would, if unrebutted, demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The Board's decision will take into account a patent owner preliminary response where such a response is filed. b. Additional grounds. Sufficient grounds under 42.208(c) may be a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.) 37 C.F.R. 42.208(c)-(d); see also 35 U.S.C. 324(a). 3. Standard is unpatentable by a preponderance of the evidence. 37 C.F.R. 42.1(d), 37 C.F.R. 42.208(c); 35 U.S.C. 324(a). 4. Claims given their broadest reasonable interpretation. 37 C.F.R. 42.200(b). 5. Applies to patents filed March 16, 2013. a. The changes for post-grant review proceedings generally apply to patents issuing from applications subject to first-inventor-to-file provisions of the AIA (subpart C). In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order any interference commenced before September 16, 2012, to be dismissed without prejudice to the filing of a for post-grant review. See 42.200(d) and 6(f)(3)(A) of the AIA. Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012) 6. Available only in the first 9 months following patent grant. 37 C.F.R. 42.202. a. A petition for a post-grant review of a patent must be filed no later than the date that is nine months after the date of the grant of a patent or of the
issuance of a reissue patent. A petition, however, may not request a post-grant review for a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued unless the petition is filed not later than the date that is nine months after the date of the grant of the original patent. 7. Keep an eye on issuing patents and docket the PGR deadline. 8. Anyone can challenge the patent. A person who is not the owner of a patent may file with the Office a petition to institute a post-grant review of the patent unless: (a) Before the date on which the petition for review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent; or (b) The petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition. 37 C.F.R. 42.201. 9. Grounds include not only printed publications and patents, but also any ground that can be raised under Section 282(b) of the Patent Act, including subject matter ineligibility under 35 U.S.C. 101, failure to provide a written description under 35 U.S.C. 112, or failure to describe the invention in sufficient detail to enable a person of ordinary skill in the art to practice the claimed invention without undue experimentation under 35 U.S.C. 112. 35 U.S.C. 321(b); Best mode is no longer a basis for invalidity under 35 U.S.C. 282. 37 C.F.R. 42.204. 10. Estoppel effect: Estoppel applies to proceedings before the USPTO and in civil actions and other proceedings on grounds actually raised and all grounds that could reasonably have been raised. 35 U.S.C. 325(e)(1) and (e)(2). 11. Barred by prior filed civil action: A post grant review may not be instituted if the petitioner or real-party-in-interest filed a civil action challenging the validity of a claim of the patent. 35 U.S.C. 325(a)(1). Page 3 of 10
12. Discovery is limited to factual assertions advanced by either party in the proceeding. 35 U.S.C. 326(a)(5). C. INTER PARTES REVIEW (IPR): 1. Like PGR, except: 2. Inter Partes Review is not available until nine months after the patent s issue date, or the end of PGR 35 U.S.C. 311(c). 3. Inter Partes Review is not allowed if the petitioner has waited more than one year after being served with a complaint (35 U.S.C. 315(b)) or if the petitioner previously filed a civil action challenging the validity of a claim of the patent. 35 U.S.C. 315(a)(1) and (b). 4. Depositions of witnesses submitting affidavits is permitted, as well as other discovery necessary in the interest of justice. 35 U.S.C. 316(a)(5). 5. Estoppel is triggered by the final written decision of the PTAB (35 U.S.C. 318(a)), and applies to proceedings before the USPTO and in civil actions and other proceedings to any grounds that the petitioner raised or reasonably could have raised. 35 U.S.C. 315. 6. Applies to patents filed at any time: a. The changes for inter partes review proceedings apply to any patent issued before, on, or after September 16, 2012 (subpart B). Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012) Page 4 of 10
D. TRANSITIONAL PROGRAM FOR REVIEW OF A COVERED BUSINESS METHOD PATENT (CBM): 1. Purpose: To challenge business method patents 2. Only available for a covered business method patent. 37 C.F.R. 42.304(a). 3. Only available for a limited time: Sept. 16, 2012 to September 15, 2020. 37 C.F.R. 42.300(d). 4. Available no matter when the application was filed or issued: The changes for transitional program for covered business method patents apply to any covered business method patent issued before, on, or after September 16, 2012 (subpart D). Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012) 5. CBM definition is: (a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions. (b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution. 37 C.F.R. 42.301(a) and (b). 6. Example of a CBM claim (as determined by the PTAB in a CBM proceeding): Page 5 of 10
Page 6 of 10 1. A method of informing users of stock market events comprising the steps of: (a) receiving real-time stock market data on a network of computers; (b) receiving on the network of computers instructions from a user to specify watch data defining an event, the watch data including a stock market technical analysis request specifying technical analysis formulae to be applied to the real-time stock market data; (c) using the network of computers to periodically apply the user-specified watch data including the stock market technical analysis formulae to the real-time stock market data in real-time to ascertain whether a valid response to the watch data has occurred based on the real-time stock market data, thereby determining an occurrence of the event defined by the user-specified watch data; and (d) causing a real-time notification by the network of computers to be provided to the user via a remote communications device upon the occurrence of the event defined by the user-specified watch data, the realtime notification directed to a remote communications device of the user so that the user can then provide instructions for share market transactions on an instantaneous basis. 7. CBM may be filed at any time except during the 9 month window for PGR filing (after grant of a patent or issuance of a reissue patent). 37 C.F.R. 42.303. 8. Standard: unpatentable by a preponderance of the evidence. 37 C.F.R. 42.1(d). 9. BASES: Any grounds permitted under paragraph (2) or (3) of 35 U.S.C. 282(b), including 101, 102, 103, 112. 37 C.F.R. 42.304. 10. CBM timeframe is based on PGR timeframe: A covered business method patent review is a trial subject to the procedures set forth in subpart A of this part and is also subject to the post-grant review
Page 7 of 10 procedures set forth in subpart C except for 42.200, 42.201, 42.202, and 42.204. 37 C.F.R. 42.300(a). (1) petition (2) patent owner optional opposition/response brief within time period set by board (3 months); (b) Due date. The preliminary response must be filed no later than three months after the date of a notice indicating that the request to institute a post-grant review has been granted a filing date. A patent owner may expedite the proceeding by filing an election to waive the patent owner preliminary response.); 37 C.F.R. 42.207(b). (3) board decides whether to invoke the trial proceeding within 3 months of the opposition/response, if any is filed, then Board issues decision plus an order for scheduling. 35 U.S.C. 324(c). (4) After institution of trial proceeding, pendency before the Board is normally no more than one year, but can be extended by up to six months for good cause by the Chief Administrative Patent Judge. 37 C.F.R. 42.300(d). 11. Two Kinds of Estoppel: In civil actions and before the ITC, actually raised. AIA Sec 18(a)(1)(D). Before the USPTO, raised or reasonably could have raised during the trial... 37 C.F.R. 42.73. a. The petitioner in a transitional proceeding that results in a final written decision under Section 328(a) of title 35, United States Code, with respect to a claim in a covered business method patent, or the petitioner's real party in interest, may not assert, either in a civil action arising in whole or in part under section 1338 of title 28, United States Code, or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), that the claim is invalid on any ground that the petitioner raised during that transitional proceeding. AIA Sec 18(a)(1)(D). i. FINAL WRITTEN DECISION.--If a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and
Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d). 35 U.S.C. 328(a). b. Estoppel. (1) Petitioner other than in derivation proceeding. A petitioner, or the real party in interest or privy of the petitioner, is estopped in the Office from requesting or maintaining a proceeding with respect to a claim for which it has obtained a final written decision on patentability in an inter partes review, post-grant review, or a covered business method patent review, on any ground that the petitioner raised or reasonably could have raised during the trial, except that estoppel shall not apply to a petitioner, or to the real party in interest or privy of the petitioner who has settled under 35 U.S.C. 317 or 327. 37 C.F.R. 42.73. E. Derivation Proceeding (A limited replacement of interference) 1. Derivation proceeding may be filed within the one-year period following publication of a claim to an invention that is the same or substantially the same as the earlier application s claim to the allegedly derived invention. 37 C.F.R. 42.403. 2. Petition must demonstrate a) that the petitioner has at least one claim that is the same or substantially the same as the respondent s claimed invention; and b) that the claimed invention was derived from an inventor named in the petition, and the earlier filing was unauthorized. 37 C.F.R. 42.405. III. OTHER PROCEDURES: A. Third Party Submission (similar to prior Post Publication Submission): 1. Must be signed, but real-party-in-interest apparently need not be disclosed any more. 2. Must include a document list; a description of the relevance of the art to the application; a legible copy of each item other than US applications and patents. 37 C.F.R. 1.290(d). Page 8 of 10
3. The pre-issuance submission must be filed before the earlier of 1) a Notice of Allowance or 2) the later of either a) six months after publication of the application or b) the first rejection of the application. 37 C.F.R. 1.290. 4. For every 10 items listed, the fee is $180 for large entities, $90 for small. 37 C.F.R. 1.290(d); 37 C.F.R. 1.17(p). IV. POSSIBLE STRATEGIES FOR USE OF PGR, IPR & CBM Follow issuing patents in your technology or your clients technology and docket 9 months for filing a PGR. If you are the patent owner, and you see a potential infringement, wait before sending a cease and desist for 9 months after the patent issues (to rule out PGR-so no 112 and no 101 challenge can be brought unless it fits into CBM). Use PGR for broader attack on a patent where 112 and 101 are issues or use CBM where possible for such broader attack Use IPR to limit estoppel 112 and 101 will not be estopped (because you can t bring 112 and 101 challenges so those will not be estopped). Do not sue for DJ action before bringing an IPR proceeding (if you want to bring IPR). Docket 1 year from being sued for bringing IPR. Consider CBM and IPR for patents where it is iffy as to whether it is a CBM ( a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service but not a technological invention ). Consider CBM because estoppel is narrower (only actual) and because there is no deadline. Consider using CBM or IPR or PGR to get a detailed claim interpretation even if validity may be difficult to challenge. Page 9 of 10
Where there is pending litigation, consider reexamination in addition to CBM or IPR if you want to move for a stay sooner in your case. Why? Because CBM and IPR can take 6 or more months for an initial decision, while reexamination will take only 90 days maximum for the initial decision. Courts should grant stays more liberally with PGR, CBM and/or IPR pending than with reexaminations because: i. the CBM, PGR and IPR proceedings are limited in time to one year trial period (or 1.5 years with cause); ii. these proceedings are conducted by the PTAB (as opposed to one examiner), b/c the decisions are very detailed; iii. in the AIA legislative history, Senators, e.g. Senator Schumer, believed that it is hard to imagine a Court not staying a case where there proceedings are pending; iv. the estoppel effect typically will greatly simplify the Court s issues; and v. these proceedings involve discovery and other litigation-like procedures. Some difficult questions: Will reasonably could have brought mean you have to do a patent validity search or will you be estopped from all 102/103 challenges based on prior art that could have been brought in a PGR or IPR? Page 10 of 10