AMERICA INVENTS ACT
rejection, a request for inter partes reexamination would probably not have gone far.
Strategy considerations: inter partes reexamination should be considered by current competitors, particularly accused infringers. Inter partes reexamination offers advantages over ex parte reexamination in that the patent owner cannot conduct an interview with the CRU and the third party requester may rebut the patent owner’s arguments for patentability. Inter partes reexamination also offers an advantage over inter partes review in that the patent owner in inter partes reexamination is not afforded an opportunity to file a preliminary response before the USPTO determines whether to institute the proceeding. Furthermore, the estoppel effect from inter partes reexamination can be delayed, if necessary, by appeal to the board and Federal Circuit.
Post-grant review
Post-grant review will first become available on September 16, 2012. It will be available only for patents that are involved in an interference, certain business method patents and patents that are filed under the first-inventor-to file system, i.e. patents filed aſter March 16, 2013. Post-grant review has the potential to become
“POST-GRANT REVIEW CAN BE BASED ON A PETITION THAT RAISES A NOVEL OR UNSETTLED LEGAL QUESTION THAT IS IMPORTANT TO OTHER PATENTS OR PATENT APPLICATIONS.”
a petition for post-grant review must establish that it is ‘more likely than not’ that at least one challenged claim is unpatentable. Ostensibly, this standard is more difficult to meet than the inter partes reexamination or review’s ‘reasonable likelihood of prevailing’ standard, but it remains to be seen whether the USPTO applies these standards in a meaningfully different way. Alternatively, post-grant review can be based on a petition that raises a novel or unsettled legal question that is important to other patents or patent applications. What might constitute such a novel or unsettled question is, well, unsettled. In response to a petition for post-grant review, a patent owner may file an optional preliminary response.
a very attractive mechanism for challenging patents. It will be available only within the first nine months following issuance of a patent or issuance of a broadening reissue patent. A petitioner may seek post-grant review on any ground for invalidity of a patent claim (e.g. prior art, lack of enablement, lack of written description, or lack of utility, but not failure to comply with the best mode requirement). And,
Adjudication of post-grant review will have many parallels with adjudication of interferences, e.g. it will be adjudicated by a three-judge panel of the PTAB, a patent owner that wishes to amend its claims must do so by motion, certain discovery will be available (discovery related to factual assertions of the parties), and an oral hearing. By statute, the USPTO generally must make a final determination of a post-grant review within one year or 18 months if good cause exists.
Post-grant review will not be available to
38 World Intellectual Property Review November/December 2011
www.worldipreview.com
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