Looking Back at U.S. Patent Law – Big Changes in 2012 (part 1)

U.S. patent law experienced a significant number of changes in 2012, as the America Invents Act, new regulations, USPTO actions and court decisions all left an impact that will affect patent filings for years to come.

This post will discuss changes that arose due to the new laws, including the America Invents Act, a landmark 2011 law that made sweeping changes to U.S. patent law.   A second post will address other significant changes spurred by the USPTO and the courts.

America Invents Act Implementation

On September 16, 2012, the USPTO implemented a second round of significant actions under the America Invents Act (AIA).  As described in a previous IP Spotlight post, the AIA created several immediate changes when it took effect in September 2011, and the final round of changes will be implemented in March 2013.

2012’s new rules created several new options for challenging granted patents, as well as a new process for third-party participation in patent application examination.  The 2012 rules included:

Options for challenging patents and applications:

  • Post Grant Review:  The USPTO implemented a post-grant review (PGR) process in which it will accept petitions to reconsider its decision to grant a patent.  A PGR petition must be filed within 9 months of the date of the grant.  Much like the opposition process that is available in Europe, the USPTO’s PGR process allows patents to be challenged on any invalidity ground — including prior art, lack of enablement, or inadequate written description.  The petitioner and the patent holder may respond to each other’s filings during PGR, engage in limited discovery, and stop the proceeding through a settlement.  PGR is not available to any petitioner who is also challenging the patent in a court proceeding.  PGR is available for any patent claims having an effective filing date after March 16, 2013. The fee for a PGR proceeding is significant:  a minimum of $35,800.
  • Inter Partes Review:  Inter partes review (IPR) is another post-grant challenge process, available within 9 months after patent grant or termination of PGR, whichever is later.  An IPR proceeding is similar to a PGR proceeding, except that the basis for IPR is limited to novelty and obviousness challenges on the basis of prior art publications.  The base fee for an IPR petition is $27,200.
  • Covered Business Method Patents:  Entities who have been charged with infringement of a covered business method (CBM) patent can challenge the patent’s validity in an additional proceeding if the time for PGR has expired.  A CBM patent is one that claims “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration or management of a financial service.”  Parties who are sued for infringement of a CBM patent may take advantage of PGR proceedings within one year after being named in a lawsuit or otherwise charged with infringement, even if the 9-month period for standard PGR has expired.
  • Pre-issuance Submissions:  A new set of rules permits any third-party to ask the USPTO to consider prior art patents, published patent applications and other publications that are of potential relevance to a pending patent application.  If a third-party submits such information (1) within six months of the application’s publication or before the first Office Action (whichever is later), and (2) with a concise statement of relevance that meets the requirements of the rule, the USPTO Examiner must consider the submission when examining the application, unless the Examiner already issued a Notice of Allowance.  Unlike the post-grant challenges described above, the party who initiates a pre-issuance submission has no right to participate in the review after filing the submission.

Owner as applicant:

  • Employer Corporation as Applicant:  An entity to whom an inventor has assigned (or is under an obligation to assign) the patent will be permitted to file the application instead of (or on behalf of) the inventor.  In addition, if an inventor refuses to assign an oath, an employer or assignee can make the oath upon showing that the entity was entitled to assignment from the inventor.  Patent applications must now use a new form for inventor oaths,  even if the application is a continuation of a previously filed application that used the old oath format.

Micro entity rule:

  • Reduced Fees for Micro Entities:  On December 19, 2012, the USPTO published a final rule permitting a 75% fee reduction for “micro entities” — typically individuals who meet certain income requirements.   The final rule will take effect March 19, 2013.

Changes to U.S. Design Patent Law

On December 19, President Obama signed the Patent Law Treaties Implementation Act into law.  Among other things, the new law: (i) extends the term of design patents filed after the effective date of the Act to 15 years; (ii) allows U.S. applicants to file an international design application before entering the national stage in U.S. and foreign countries; and (iii) allows design patent holders to establish provisional rights for pre-issuance infringement.  More details are available via this link.

Next up:  USPTO growth, court decisions and more.

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