One of the driving concerns for Congress when drafting the America Invents Act of 2012 (AIA) was the lack of an efficient, cost-effective means of challenging patents of dubious validity. As demonstrated by the recent GAO report on patent litigation, patent quality is at the heart of many issues affecting infringement litigation, such as the increase in suits brought by non-practicing entities.
Through the AIA, Congress addressed patent quality by introducing new post-grant procedures that provide for a quicker and cheaper means of assessing patent validity than reexamination or civil litigation. There are also safeguards in place to prevent the harassment of patent owners. In this post, I will look at how the new post-grant review procedures provide for a speedier, cost-effective process for challenging patent validity. This is accomplished through several key requirements of the AIA post-grant procedures:
Under the AIA, the director of the USPTO must issue the outcome of a post-grant review no later than one year from the date of filing. This can be extended up to 18 months, but only in very rare circumstances. In light of this deadline, the post-grant review procedures have rules that provide for limited responses and replies. There is little opportunity for delays to occur.
The petition is a crucial document in all three AIA post-grant review processes. All grounds for unpatentability that the petitioner wants to assert must be listed in the initial petition. It is not possible to add grounds later on in the process. In addition, an AIA post-grant review cannot proceed unless the USPTO director determines that there are sufficient grounds to proceed. For inter partes review, the director must be satisfied that the petition has a reasonable likelihood of success on at least one of the challenged patents. For post-grant review, the petition must clearly demonstrate that at least one of the claims being challenged is unpatentable. The director will remove any grounds that do not meet these tests. Only the grounds that meet these tests will be reviewed by the Patent Trial and Review Board (PTAB). If none survive, the petition will not move forward. This requires patent challengers to front-load their case and prevents challenges from mushrooming after the review begins. The result is a much more efficient process that focuses only on the arguments and evidence provided in the petition.
Limited responses and replies
For a large majority of AIA post-grant proceedings, the record will only include:
- The petition;
- The patent owner's preliminary response;
- The patent owner’s response and motion to amend claims;
- The petitioner’s reply to the above; and
- The patent owner’s reply to the petitioner’s opposition.
Unlike reexamination, where the burden is on the USPTO to determine patentability, it is up to both challenger and patent owner to prove their respective cases. Challengers must prove that the claim under review is invalid. Patent owners must both show that the challenger’s argument has no merit and, if needed, provide additional evidence that the claim under review is valid. The administrative patent judges focus entirely on the record before them and whether the parties have met their burdens.
There is limited discovery allowed for AIA post-grant proceedings, which makes them far less costly than pursuing an infringement lawsuit in district court. Parties are entitled to depose witnesses submitting affidavits or declarations, and may also agree to additional discovery. However, a party seeking discovery outside of an agreement must file a motion before the PTAB, which has high standards for approving whether or not it will allow additional discovery.
The AIA post-grant review procedures allow for the possibility of the parties reaching a settlement. This differs significantly from the reexamination process, and gives parties an opportunity to resolve a dispute over patent claims at any point in the review process. As seen in the court system, settlements can provide significant savings of both money and time to parties. By allowing for settlements, AIA post-grant review procedures let parties take advantage of these savings.
The provisions of the AIA discussed above provide a significantly quicker and cheaper means of challenging patent validity through post-grant review. They also go a long way to improving patent quality in the U.S because the USPTO will amend examination procedures in light of post-grant review outcomes.
In our next post, we will discuss the provisions of the AIA that are meant to prevent the harassment of patent owners.
This is for general information and is not intended to be and should not be taken as legal advice for any particular matter. It is not intended to and does not create any attorney-client relationship. The opinions expressed and any legal positions asserted in the article are those of the author and do not necessarily reflect the opinions or positions of Miles & Stockbridge P.C., its other lawyers, or InsideCounsel.