Since its inception in 1999, the inter partes reexamination procedure has been a boon to patent challengers. Since the 2011 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. Post-grant review provides 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 USPTO “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 was replaced by inter partes review in September 2012. The new inter partes review proceeding 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 USPTO. The inter partes review also provides limited options for discovery, making this proceeding a hybrid between patent prosecution and litigation.
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.
To be most effective, companies taking advantage of the new AIA procedures need lawyers with both patent prosecution experience representing companies before the USPTO 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.