IP: The America Invents Act’s well-hidden secrets

Congress tries to resolve confusion over appellate procedure for patent claims

Not even a year after passing the landmark legislation, Congress already is considering amending the America Invents Act (AIA) to remove issues and inconsistencies within the legislation. While I have been skeptical that Congress would act so soon to amend the AIA, the House of Representatives heard testimony on several of these issues last month. We will see if Congress has the political will to act on patent law reform in an election year.

While Congress contemplates corrective action to the AIA, the act itself works to correct existing inconsistencies in the patent laws. Some corrective actions are so subtle as to almost escape notice. There is no fanfare for these provisions, no chest-thumping debate or impassioned speeches. It is lawmaking at its most unglamorous, but most necessary.

When it came to appeals from ex parte reexamination, section 306 of the patent statute referenced appeals under “sections 141 to 145.” Consequently, the argument could be made that both routes, i.e., proceeding directly to the Federal Circuit or going through the U.S. district courts, were available. The trial court route might be of particular interest to a patentee who might wish to put on expert testimony and present evidence of secondary considerations of non-obviousness that might not have been presented to the examiner. In effect, the trial court might provide a second bite at the apple.

The USPTO disagreed. According to the USPTO, the appeal from ex parte reexamination must go directly from the board to the Federal Circuit, at least for ex parte reexaminations initiated after November 1999. The USPTO’s interpretation brought the appellate procedure for ex parte reexaminations into agreement with that for inter partes reexaminations. In that regard, the applicable section of the patent statute relating to inter partes reexaminations referred to sections “141 to 144,” and thus not to section 145, simplifying the determination of Congressional intent.

Contributing Author

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Paul Craane

Paul Craane is a partner at Marshall, Gerstein & Borun LLP in Chicago, Illinois. For nearly twenty years, Paul has been prosecuting patent...

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