PATENT ALERT: Changes to USPTO post-grant proceedings in AIA Technical Corrections bill signed into law

PATENT ALERT: Changes to USPTO post-grant proceedings in AIA Technical Corrections bill signed into law.

On January 14, 2013, President Obama signed into law H.R. 6621, the AIA Technical Corrections bill. Particularly relevant to USPTO post-grant proceedings, the AIA Technical Corrections bill removes the nine-month “dead zone” for filing petitions to institute an inter partes review (IPR) with regard to reissue and first-to-invent patents. Thus, a petitioner may now request an IPR at any time after issuance with regard to all reissue patents and patents issued from applications that were filed under the first-to-invent system. Rep. Lamar Smith, a co-sponsor of the AIA Technical Corrections bill, provided the following detailed comments regarding the changes to the nine-month dead zone.

• (d) Dead Zones. This subsection fixes two provisions that inadvertently make it impossible to seek either post-grant or inter partes review of a patent during certain time periods. Section 311(c) of title 35 bars anyone from seeking inter partes review of a patent during the first nine months after the patent issues or until a post-grant review of a patent is completed if such review is instituted. Section 311(c) was intended to preclude challengers from using IPR during the period when they can instead use PGR. The problem with the provision is that during Senate floor consideration of the AIA in March 2011 another provision was added to the bill via the managers’ amendment that allows only first-to-file patents to be challenged in PGR. This provision, at section 6(f)(2)(A) of the AIA, was intended to allow USPTO a longer period to prepare to conduct PGR proceedings and to exclude patents that raise discovery-intensive invention-date and loss-of-right-to-patent issues from PGR. However, §311(c) takes effect and applies to all petitions for IPR that are filed on or after September 16, 2012. Yet for several years thereafter, almost all patents that are issued will still be first-to-invent patents. And under §311(c) of title 35, these patents cannot be challenged in IPR during the first nine months after their issuance, while under section 6(f)(2) of the AIA these patents cannot be challenged in PGR. Paragraph (1) eliminates this nine-month dead zone by making §311(c) inapplicable to patents that are first-to-invent patents and are thus ineligible for PGR.

Paragraph (2) addresses another dead zone that is unique to reissue patents. Under §311(c) of title 35, IPR cannot be sought during the nine months after a patent is reissued. This limit was imposed in order to force challengers to bring a PGR challenge (rather than an IPR) against what is in effect a new patent. However, §325(f) of title 35 then bars a challenge to any claim in a reissue patent that is ”identical” to or ”narrower” than the claims in the original patent. As a result, such identical or narrower claims could not be reviewed in either a PGR or an IPR during the nine months after a reissue. Paragraph (2) eliminates this dead zone by repealing section 311(c)(1)’s limit on filing a petition for inter partes review after a patent has been reissued.

A copy of the AIA Technical Corrections bill can be found here, and a copy of Rep. Smith’s complete comments regarding the bill can be found here.

Please contact Karl Renner or Dorothy Whelan with any questions, or visit our post-grant webpage for further information.