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IP: Phase 2 implementation of the America Invents Act provides new “patent attack” tools

The next set of changes, taking effect Sept. 16, offers new methods for taking down questionable patents

The Leahy-Smith America Invents Act (AIA) represents one of the most significant overhauls of U.S. patent law since 1952. Signed into law on Sept. 16, 2011, the AIA continues to be implemented in phases. While some changes took effect immediately, others, such as switching from a “first to invent” to a “first-inventor-to-file system,” will not happen until March 16, 2013. The next set of changes, which take effect on Sept. 16 of this year will provide several new (or at least improved) tools for attacking questionable patents and patent applications. This article examines a few of the most anticipated ones. While their relative effectiveness remains to be seen, these tools provide any party contending with overreaching patents (or perhaps more accurately, overreaching patent owners) with options much earlier in the game than they had under the old system.

Third-party submissions during examination

Under this procedure, a third party may submit printed publications, along with a concise description of their relevance, to the U.S. Patent and Trademark Office (PTO) for consideration in pending patent applications. Strategic use of these pre-issuance submissions could limit the scope of a competitor’s patent claims and, potentially, prevent a competitor from obtaining any patent at all. Although there previously were ways to get prior art printed publications in front of an examiner, this new procedure provides a more powerful tool because it allows (and, in fact, requires) a third-party submitter to explain how a patent or publication has relevance to a target application and rather broadly defines what a “printed publication” is over the previous mechanisms. Furthermore, these submissions may be made anonymously.

The PTO considers the concise description of relevance to be a factual statement regarding the submitted evidence. While the PTO cautions that a third party should not attempt to participate in the prosecution of a target application, it acknowledges that a concise description of relevance may include a narrative description or a claim chart mapping various portions of one or more submitted documents to the claim limitations of a target application’s claims.

The rule governing this procedure does not limit the type of printed publications that can be filed as part of a compliant submission. Documents that may be outside the scope of the PTO’s databases, such as abstracts or posters from scientific meetings, marketing brochures, product specifications or litigation documents, may be particularly useful to an examiner. Third parties may even submit documents already considered by an examiner with an explanation of their application and relevance.

There are certain time limits tied to prosecution milestones of a target application to submit such documents. Suffice it to say that the most prudent approach will be to make a submission as soon as practicable after publication of a target application. Due to this time sensitivity, monthly or quarterly alerts to identify newly published applications that could be targets may prove useful.

Post grant review (PGR) proceedings

Except for those third parties who have already sued in federal court to challenge validity of a targeted patent, third parties are now allowed to request PTO review of a patent under enhanced proceedings. You can obtain a review by demonstrating through submitted information (and after consideration of any rebuttal) that “more likely than not” at least one of the claims is unpatentable. Supporting information may incorporate invalidity arguments on grounds such as unpatentable subject matter, anticipation (including on-sale bar and public use), obviousness, written description or enablement. A request for such review must be submitted to the PTO within nine months of a patent’s issuance. Again, a monitoring procedure may prove useful to those who wish to leverage the power of PGR.

Transitional program for “covered business method patents”

This specialized PGR option essentially provides that any party sued for or charged with infringement may challenge a “covered business method patent” by the same process as PGR proceedings, except that this type of challenge can only be filed nine months after a target patent’s issuance. This option will sunset eight years from implementation, hence the “transitional” label. A “covered business method patent” is defined in general terms as a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service, excluding patents covering technological inventions. This definition will surely be litigated, but suffice it to say that this proceeding provides a nice alternative to litigants wanting to challenge such business method patents.

© 2019 Neal, Gerber & Eisenberg LLP.


About this Author

William J. Lenz, Intellectual Property & Technology Transactions attorney, Neal Gerber law firm

William J. Lenz represents clients in a wide variety of intellectual property matters, with an emphasis on patent and copyright litigation, strategic planning and clearance, patent prosecution and portfolio management, technology transfer and licensing, and corporate IP transactions.  He represents clients across a broad spectrum of industries and technologies, with an emphasis in financial, information technology/data, software, digital and mobile user experience, telecommunications, health care, and consumer electronics sectors.

Bill provides his legal services with a solid...