by Dennis Crouch
September 16, 2012 is a big date for parties considering a post-grant challenge to someone else’s patent. Eight things that your clients should know:
- End of Inter Partes Reexamination: September 15, 2012 is the last date to request inter partes reexamination under the old system. That is to say, inter partes patent reexamination filings will no longer be accepted on September 16, 2012. Parties who understand and find the current system valuable may want to accelerate their filing timeline accordingly.
- Beginning of Inter Partes Review: The new inter partes review system begins on September 16, 2012 and applies to any issued patent that has been issued for at least 9–months.
- Inter Partes TRIAL: Despite the similar name, the procedures involved with an inter partes review will be quite different from inter partes reexamination. In short, the review will be more like a trial and heard by a tribunal of administrative patent judges rather than being considered by an examiner.
- $$$ Inter Partes Expense $$$: The trial features will certainly make inter partes reviews significantly more expensive based on greater attorney fees. In addition, the fee for filing an inter partes review petition is $27,200 (plus $600.00 for each claim over 20). Current inter partes reexamination fee is $8,800.
- $$$ Ex Parte Reexamination $$$: The AIA barely changes the ex parte reexamination process. Those reexaminations can still be requested by third parties. The major change, however, is that the fee for ex parte reexamination will jump on September 16, 2012 from $2,520 to $17,750. What is $15k worth to your client?
- Post Grant Review: Except for “covered business methods,” the post grant review system (with its broad-base of potential challenges) is on hold until 2013. In particular, PGR will only be available to challenge granted patents that are filed as applications after the March 16, 2013 first-to-file changeover
- Business Method Post Grant Review: The PGR system does open on September 16, 2012 to challenge “covered business methods.” These challenges are limited by the statute to only patents that cover some sort of financial data processing and that do not involve a novel technological feature or solution.
- Supplemental Examination: Although perhaps out of place on this list (b/c not a third party challenge), supplemental examination also becomes available on the 16th of September 2012. This process can cure inequitable conduct that committed during the original ex parte prosecution.
“the fee for ex parte reexamination will jump on September 16, 2012 from $2,520 to $17,750.” When will/can the PTO reset and lower this fee?
With Kapos in as director you know the little guy is gonna get squeezed right out of the system Vote Oboma out he is behind it.
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I don’t think it admits anything more than that additional art is known that wasn’t submitted, regardless of whether or not it could have been submitted in an IDS.
Thanks Alun – Certainly, the supplementary examination process does provide a mechanism for a patentee to enter the the ex parte reexamination process without admitting to a substantial question of patentability. However, I don't know how beneficial that is since the supplementary exam filing will be taken as an implicit statement that something is wrong with the patent. It will be interesting to see how this plays out.
IMHO the real meaning of Supplemental Examination is that it provides an alternative to filing a Request for Reexam by a patent owner, who will now no longer have to argue both that there is a substantial new question of patentability and yet that the patent is still valid. The focus has been on its ability to cure inequitable conduct, and yet I don’t think that will be the main point of it for all those who apply for it. Make no mistake, it is a first step to an Ex Parte Reexam, and not something separate.
Paul – I agree that there are many unknowns. However, companies facing a multi-million dollar infringement charge still may pull the trigger.
Dennis, in view of the wildly varying estimates for usages of these new post-grant PTO proceedings, I hope you will be able to obtain and publish those numbers in a month or two after Sept. 16, and then again at the end of the first year?
[Personally, especially given the conservatism for trying new proceedings of many patent attorneys, and some of the dangers, I think they will be surprising low numbers.]
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