Yesterday, 17 September 2012, marked the one-year anniversary of the America Invents Act, as well as the implementation of seven new provisions. Here’s an overview:
Inventor’s oath or declaration: Now in lieu of an inventor’s oath or declaration, a substitute statement can be filed in certain circumstances. Further, the filing of the inventor’s oath or declaration can now be delayed until an application is in condition for allowance, and an assignee may now be an applicant for a patent as opposed to just the inventor.
Preissuance submissions: Section 8 of the America Invents Act (AIA) amends §122 of US Code title 35 by codifying allowance of prior art submissions by third parties, a practice that has more or less been unofficially acceptable prior to AIA enactment. Under the revised §122, third party submissions of prior art will be allowed: 1) Before allowance; 2) After 6 months from publication; 3) Accompanying a concise statement of relevance; and 4) Accompanying a fee.
Supplemental examination: Supplemental examination may be requested of the patent office by the patent owner to “consider, reconsider or correct information” believed to be relevant to the patent. Note: This isn’t limited to prior art. The patent cannot be held unenforceable based on information considered during supplemental examination. Reexamination is ordered if the request for supplemental examination raises at least one substantial new question of patentability.
Citation of patent owner claim scope statements: In addition to prior art, a party will be allowed to submit into a file statements that the patent owner made regarding the scope of any claim during either a federal court proceeding or another USPTO proceeding. This provision is actually broader than it seems, as “during a federal court proceeding or another USPTO proceeding” includes any out-of-proceeding statement that was filed by the patent owner in a proceeding before a Federal court or the USPTO in which the patent owner took a position on the scope of any claim of the patent. That’s right. In line with the USPTO’s goal of limiting the number of sides of one’s mouth from which a party may speak regarding his invention, such a statement is eligible for submission under CFR § 1.501(a)(2) even if originally made outside of the proceeding. The new rule – implemented under the America Invents Act – also specifies how the USPTO may use a patent owner’s claim scope statements during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or covered business method review. The full, final rule is currently available via the USPTO and will be published in the Federal Register on Monday, August 13th.
Post grant review: Now, post-grant review can be invoked only for patents relating to a few prescribed classes/technologies. Specifically, other than for business method patents, post-grant review is available only for patents that have a priority date later than March 15, 2013.
Inter partes review: Inter partes review is a procedure made available to challenge the validity of patent claims after the nine-month window of eligibility for post-grant review. In other words, post-grant review is the mechanism for challenging a patent’s validity during the nine-month window immediately following patent issuance while inter partes review is the mechanism for challenging the validity after the nine-month window.
Covered business method (CBM) review: CBM is available to specific parties if they have “been sued for infringement of” or “charged with infringement under” the patent. The PTO revised the rules to say that the current declaratory judgment standard from the courts will be used to determine whether a party has been “charged with infringement.” Specifically, the final version of 37 C.F.R. § 42.302(a) defines the term “charged with infringement” as “a real and substantial controversy regarding infringement of a covered business method patent such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” Eligibility and grounds for standing do not have to be shown on a claim-by-claim basis but need only be made based on the patent as a whole.