Since its inception in 1999, the inter partes reexamination procedure has been a boon to patent challengers. With the recent enactment of the America Invents Act (AIA), the reexamination landscape has again been altered, and our team is on the forefront of this new framework.
The AIA adds procedures for post-grant review, inter partes review, and supplemental examination.
Post-Grant Review. One year after the enactment of the AIA, post-grant review should provide a high-speed option for challenging the validity of a patent shortly after it issues. A unique aspect of this process, and certainly one that legal counsel and businesses must consider, is that post-grant review petitioners are estopped from raising with courts, the International Trade Commission (ITC) or the PTO “any ground that petitioner raised or reasonably could have raised during the review”—raising the bar for the need to consult with an experienced patent team.
Inter Partes Reexamination/Review. The inter partes reexamination will be replaced by inter partes review one year after the enactment of the AIA (September 16, 2012). However, the new inter partes review has time limits on filing when the patent is currently in litigation, which can lead to “enactment defendants” losing their option to challenge the patent at the PTO. The inter partes review will also provide some options for discovery.
Supplemental Examination. The AIA permits parties to attempt to avoid or purge potential inequitable conduct claims by utilizing the Supplemental Examination procedure described in new 35 U.S.C. § 257. There are exceptions to this procedure.
With the new reexamination framework and the options and limitations it provides, there has never a greater demand for versed, sophisticated patent counsel. The attorneys at Alston & Bird have been heavily and successfully involved in the reexamination process on behalf of dozens of clients for many years and continue to do so today. Indeed, our patent attorneys have taken part in hundreds of reexaminations and reissues. To be most effective, companies taking advantage of the new AIA procedures need lawyers having both patent prosecution experience in representing companies before the PTO and patent litigation experience dealing with discovery and parallel litigation matters. The patent practitioners at Alston & Bird are uniquely qualified to provide a one-stop resource for full-spectrum patent strategy.