The September 16, 2012 patent reform implementation date is nearing. Outlined below are some of the more significant procedures taking effect and the practical considerations in utilizing them.
Interested third parties will have the ability to send printed publications to the Patent Office to be considered by the examiner who is examining a pending patent application. In addition to merely providing the documents, submissions can include a detailed explanation of how the documents apply to the claims being examined. There will be important strategy considerations for whether to utilize this procedure, or to wait for a post-issuance proceeding or litigation (which will provide a more robust and ongoing opportunity to present arguments and be heard). Much will depend on the quality of the printed publications, the overall scope of the pending application and the business plans of the third party. Adding urgency to the decision-making process is the short timeframe in which the pre-issuance submission procedure is available. Submissions must be made before the allowance of the application or six months from the publication date, whichever comes first. Monitoring the published applications of competitors will become more important than ever for those considering taking advantage of pre-issuance submissions.
Inter Partes Review
The new inter partes review procedure replaces the existing inter partes reexamination procedure on September 16, 2012. The new inter partes review will be much faster, typically completed within one year, and will allow for limited discovery not currently allowed under inter partes reexamination. However, the fee for filing an inter partes review will increase significantly. The current fee for inter partes reexamination is $8,800 and will increase to $27,200 on September 16, 2012.
Also, the cost for ex parte reexamination increases from $2,520 to $17,760 on September 16, 2012. However, keep in mind that patents not previously eligible for inter partes reexamination because the application’s filing date will now be eligible for inter partes review so one should consider if it is more advantageous to file an inter partes review rather than an ex parte reexamination.
Post Grant Review
Inter partes review is limited to review on patents and printed publications. Post grant review allows a third party to challenge a patent’s validity on nearly any ground. A post grant review must be filed within nine months of a patent’s issue date. However, the new post grant review procedure is only available to patents that issue on applications filed on or after March 16, 2013 (i.e. applications filed when first to file goes into effect). Therefore, it will be several years before the procedure can be used.
Transitional Program for Post Grant Review for Business Methods
Like post grant review, this new post grant review for business method patents will allow a challenge to patent validity of a business method patent on nearly any ground, not just patents and printed publications. It can be difficult to challenge business method patents because of the very limited availability of prior art patents and printed publications. Post grant review for business method patents is not limited to nine months from patent issue date. However, one must be charged with infringement before filing a request under this new program.
While already in effect, it is worth a reminder that accelerated examination of applications is available. For an additional fee of $4,800 ($2,400 for small entities), new applications can be filed with an explicit request for accelerated examination. Final disposition of the application (e.g. an allowance or final rejection) is reached within one year. For important inventions, the added fee may be justified to expedite the process.