John Lane on AIA – Part 2

November 11, 2015 News

Prior use

With respect to prior public uses and sales, evidence of such usage or sales anywhere in the world may potentially qualify as patent defeating prior art as contrasted with the old US statute where only uses and sales occurring within the US could qualify. The statutory language encompassing relevant prior art is also inclusive in nature as prior art that is ‘otherwise available to the public’ may be raised as potentially patent defeating evidence. Similar statutory language (available to the public) can be found in the EPC in determining evidence of prior art.

With specific regard to earlier filed applications, under new AIA law, the patent defeating date relied upon can be traced as far back as an earlier foreign (non-US) priority date. Under prior US law, only the earliest US filing date could be relied upon for the offensive purpose of challenging US filed applications.

Provisional applications, priority, and grace periods

Further, the new FIF system encourages an early filing strategy and tends to discourage, with limited exceptions, early publication as is the case under European practice. US provisional applications, which can be prepared at lower expense than regular applications, can also be employed to benefit an applicant in establishing early priority/filing dates. As an example of absolute priority principles under FIF, US patents, published US patent applications and published PCT applications from others qualify as prior art as of their priority filing date:

Example 1–Prior Third Party Filing

Under the AIA, the published US or PCT patent application of the 3rd party qualifies as prior art since its foreign priority date (of 1 September 2012) is earlier than the inventor’s US filing date (of 1 April 2013). Note however that if the inventor’s US application is filed before 16 March 2013, then the old patent statute is applied. Under the old statute, such third-party applications would not qualify as prior art, provided that the applicant can establish an earlier invention date.

Practitioners and applicants should also be aware that the AIA still preserves the US notion of a one-year grace period to allow limited early disclosure of the invention by an applicant, who will not be defeated by intervening third party disclosures or filings, as long as the application is filed within a year of such disclosure. The following two examples are illustrative of this point:

Example 2–Prior Third-Party Publication

In the above context, Publication ‘A’ of another party qualifies as prior art. In contrast to the old statute, the date of invention is no longer relevant as all published documents and other public activity prior to filing date can be cited and considered as prior art. However, where there is a prior public disclosure by an inventor who later files an application within the one year grace period, a different outcome materializes:

Example 3–Prior Disclosure by Inventor

Publication A of another party will not be considered potentially patent-defeating prior art because the inventor had published the invention before Publication A and then subsequently filed the application covering the subject matter of the invention within the one-year grace period. There remains considerable debate, however, in situations where publication A discloses additional embodiments that were not previously disclosed by the inventor, as to whether or not such additional embodiments may be citable against the application as a basis for a patentability challenge. It will be left to future specific cases and United States Patent and Trademark Office (USPTO)/US Court decisions to identify the correct criteria and principles applicable to such circumstances.

Post-grant review or PGR in more detail

The second most significant feature of the AIA apart from the introduction of ‘first inventor to file’, is the introduction of an opposition type procedure called the Post-Grant Review (PGR), which a third party may request as to any patent that was examined under the new ‘first inventor to file’ (ie filed on/after 16 March 2013) provisions of the AIA. The PGR request is not automatically granted substantive review but is subject to satisfying a threshold standard upon the filing of a petition which shows that it is more likely than not that at least one challenged claim is unpatentable. The PGR request must be filed within nine months of the grant of the patent sought to be challenged. The claims may be challenged on any available statutory grounds, eg lack of novelty, obviousness, inadequate disclosure, indefiniteness, lack of enablement, etc.

The evidence that may be relied upon in a PGR is not limited to printed documents, but may include affidavits, declarations, or other evidence (including such evidence of prior public use or sale), in addition to patents and printed publications. During the PGR proceeding, the patent owner is allowed to file one motion to amend the claims in the patent:

  • (1) to cancel any challenged claim,
  • (2) to propose a reasonable substitute claim(s), and
  • (3) to amend as long as the proposed amendment does not broaden the scope of the claim

According to the statute and implementing procedural regulations, the USPTO will seek to complete each PGR within 12-18 months from initiation. There is no restriction to a voluntary settlement between the parties and any decision by the USPTO is appealable to the Court of Appeals for the Federal Circuit.

Part II will explore in more detail the new Inter Partes Review proceeding, the Covered Business Method patent procedure conducted in the Patent Trial and Appeal Board (this procedure is a subspecies of PGR), costs, some of the more significant risks and implementation issues associated with the initiation and conduct of both the PGR and IPR proceedings and other features of the AIA such as willful infringement provisions.

John Lane specializes in complex intellectual property litigation and his practice is focused both in the U.S. and on an international scale.