This is the fourth in a series of articles on the America Invents Act.
The America Invents Act (AIA) creates an administrative post-grant review procedure to determine the validity of claims of recently-issued patents. When served with a third party’s petition for post-grant review, here are five procedural steps the patent owner may want to consider:
Know your enemy. Post-grant review provides at least one opportunity for the patentee to cancel a challenged claim or propose a reasonable number of substitute claims. This is similar to auxiliary requests in European patent oppositions. The patent owner may want to investigate any competitive products the challenger recently introduced to the market and draft proposed substitute claims that overcome any statutory problems identified in the petition for post-grant review (if possible), but still read on those products.
However, the AIA does provide that any amended or new claims added during a post-grant review are subject to intervening rights, just like claims of reissue patents. As an alternative, if the patentee still has a continuing application pending before the USPTO, that application may be a vehicle for obtaining issued claims that read more closely on the competitor’s product without being subject to intervening rights.
Be aware that discovery is a two-way street. Since discovery is available as to factual assertions advanced by either party, depending on how many fronts your company is or may be litigating against the challenging entity, post-grant review may provide an opportunity to learn otherwise private information about the adversary that will be beneficial in other forums.
Offer an olive branch. Once a post-grant review is declared, it can be settled by mutual request of the parties any time prior to the USPTO’s Patent Trial and Appeal Board reaching a decision on the merits. As a potential settlement incentive to the challenging party, if a post-grant review is settled prior to a decision, no estoppel attaches to the petitioner. This means the challenger would still be able to assert grounds for invalidity that the petitioner raised or could have raised during the post-grant review in subsequent court or International Trade Commission proceedings. If the post-grant review goes the distance, the challenger would be estopped from asserting such grounds in other proceedings.
Post-grant review is not quite around the corner. The AIA indicates post-grant review takes effect Sept. 16, and rules for its implementation have yet to be finalized. Post-grant review will only be available for patents issued (or re-issued) on applications having an effective filing date on or after March 16, 2013.
Consequently, the first U.S. post-grant review petitions likely will not be filed until late 2014. Despite this delay, companies might consider gearing up for post-grant review by developing strategies early. The Patent Trial and Appeal Board will be an attractive forum for competitors and potential licensees to chip away at issued patent claims and reduce their exposure to potential liability for infringement.