“Can I Have a Do Over, Please?” Reflections on Certain Provisions of the America Invents Act

“Do Over” is an informal phrase meaning “to do something over,” and in American English it can be further defined as, “to do something again from the beginning, especially because you did it badly the first time.”1 According to historian Frederick Jackson Turner, “The peculiarity of American institutions is the fact that they have been compelled to adapt themselves to the changes of an expanding people—to the changes involved in crossing a continent, in winning a wilderness, and in developing at each area of this progress out of the primitive economic and political conditions of the frontier into the complexity of city life.”2 If this “adapt[ation] … to … change[]” and ability to “develop[] … progress out of … primitive economic and political conditions” is an American trait that may be summarized with the catchphrase, “Americans reinvent themselves,” then it is not surprising that provisions of the America Invents Act (AIA)3 reflect America adapting to patent systems globally and include some uniquely American “Do Over” provisions.

Similarly, and consistent with Turner’s observations on Americans, the AIA provides for a new chapter in U.S. patent law, one in which there will be “Post-Grant Review” (PGR) proceedings before the United States Patent & Trademark Office (USPTO) that are similar in some respects to European opposition proceedings, but uniquely American in others.4

Consistent with PGR being before the USPTO, the threshold for a third-party petitioner in PGR to initiate the proceedings is providing information that, if not rebutted, would demonstrate that it is more likely than not that at least one of the claims challenged is unpatentable. Likewise, to prevail on invalidity, the third-party petitioner must provide a preponderance of the evidence that the claim challenged is unpatentable.

Like its European predecessor, PGR of Chapter 32 of Title 35 of the United States Code (USC) must be filed within nine months of the grant of a U.S. patent. Also in PGR, invalidity may be asserted on any of the grounds that one may raise as a defense in patent infringement litigation before the courts under 35 U.S.C. § 282, including failure of the claims to define subject matter eligible for patenting, lack of novelty, obviousness and to provide a written description or enablement under 35 U.S.C. §§ 101, 102, 103 and 112.

However, perhaps an initial uniquely American twist is that in PGR the third-party petitioner may also raise lack of clarity or lack of definiteness under 35 U.S.C. § 112, whereas lack of clarity under Article 84 of the European Patent Convention (EPC) is not grounds for opposition proceedings. Another possible uniquely American twist to PGR is that estoppel will result from PGR. The third-party petitioner in PGR “may not request or maintain a proceeding before the USPTO with respect to that claim [challenged on PGR] on any ground that the petitioner raised or reasonably could have raised during that post-grant review.” Further, the third-party petitioner may not assert invalidity in a civil action “on any ground that the petitioner raised or reasonably could have raised during that post-grant review.”

Further still, for initiating a PGR proceeding, the third party’s written petition must identify with particularity each claim challenged and the grounds on which the challenge to each claim is based, and it must provide the evidence that supports the grounds for the challenge to each claim, including patents and printed publications and affidavits or declarations of supporting evidence and opinions, if the petitioner relies on other factual evidence or on expert opinions. Dovetailing with that, the USPTO is called upon in the AIA to set standards and procedures for discovery of relevant evidence in PGR, including that such discovery shall be limited to evidence directly related to factual assertions advanced by either party in the proceeding. As some American-style discovery in PGR is expected, it seems more akin to an American patent litigation than to an opposition proceeding. But a most uniquely American twist—in contrast to opposition proceedings—is that it will be possible to terminate PGR through settlement by the parties.

Patent unenforceability due to inequitable conduct,5 also sometimes termed “fraud on the patent office,” is also a most uniquely American concept of global patent law. As discussed in the recent Therasense Federal Circuit case, it may arise from the failure to disclose to the USPTO, with an intent to deceive, material information, e.g., patent or printed publication, but-for which the claim or claims would not have issued.6 In present practice, neither patent reissue nor patent reexamination is meant to cure fraud on the patent office. The AIA seeks to address charges of inequitable conduct and possible deficiencies of present reissue and reexamination proceedings by introducing “Supplemental Examination” (SE) proceedings.7

SE is a Do Over—an examination at the request of the Patent Owner to consider, reconsider or correct information believed to be relevant to the patent. The AIA does not limit the submitted information to patents or printed publications, and thus it may be any information believed to be relevant to the patent. Specifically, information that was known but not previously disclosed to the USPTO during original examination is not excluded and may be the subject of SE. SE is to conclude within three months of the request with a certificate indicating whether the information presented in the request raises a substantial new question (SNQ) of patentability. If USPTO agrees that the information raises an SNQ, then the USPTO is to initiate ex parte re-examination against the patent. As a corollary, it seems that if a patent owner becomes aware of information, SE may be used to ascertain whether that information is “but-for material” under Therasense, and possibly minimize litigation allegations as to it, including if the information does raise an SNQ, by dealing with it in proceedings before the USPTO. Moreover, as is a Do Over, SE is also uniquely American.

PGR and SE highlight just some of the many other aspects of the AIA that have reflections in practice abroad, but also uniquely American twists,8 thereby making the AIA live up to its name of “America Invents.”9 Accordingly, the AIA may enable the view of a patent situation from the vantage of the American patent system to provide some of the best global strategies.10

1 See MacMillan Dictionary, available online at http://www.macmillandictionary.com/dictionary/american/do-over (last accessed 9 October 2011).

2 Frederick Jackson Turner, “The Significance of the Frontier in American History” (1893) (first delivered to a gathering of historians in 1893 in Chicago, at the site of the World's Columbian Exposition, an enormous fair to mark the four-hundredth anniversary of Columbus’ voyage), available online at http://xroads.virginia.edu/~HYPER/TURNER/chapter1.html (last accessed 9 October 2011).

3 Leahy-Smith America Invents Act, H.R. 1249 (112th Congress, First Session), enacted (President Obama) 16 September 2011, available online at http://www.govtrack.us/congress/billtext.xpd?bill=h112-1249 (last accessed 9 October 2011).

4 Id. at § 6. Post-Grant Review under what becomes Chapter 32 of Title 35 of the United States Code comes into effect 16 March 2013, 18 months after enactment of the AIA.

5 See, e.g., Therasense, Inc. v. Becton, Dickinson & Co., -- F.3d --, 99 U.S.P.Q.2d 1065 (Fed. Cir. 2011).

6 Id.

7 Leahy-Smith America Invents Act, H.R. 1249 (112th Congress, First Session), enacted (President Obama) 16 September 2011, §12, available online at http://www.govtrack.us/congress/billtext.xpd?bill=h112-1249 (last accessed 9 October 2011).

8 Compare Third-Party Submissions during original examination under the EPC with Preissuance Submissions introduced by the AIA (Leahy-Smith America Invents Act, H.R. 1249 (112th Congress, First Session), enacted (President Obama) 16 September 2011, §12, available online at http://www.govtrack.us/congress/billtext.xpd?bill=h112-1249 (last accessed 9 October 2011).

9 Also, the AIA may live up to its name under historian Turner’s views, if one construes historian Turner’s view as Americans reinventing themselves.

10 Also, to paraphrase Turner, the AIA may provide yet another example of America developing progress out of economic and political conditions.