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Changes to Patent Practice Effective September 16, 2012

Posted in Almost Advice, Infringement, Law Suits, Patents, USPTO

We here at the DuetsBlog like to make sure that you’re up to speed with any significant changes to intellectual property laws that may affect your rights in whatever may result from the spinning wheels of your noggin.

As with most government regulations, the road to change is a slow one.  We started off last year with fee increases and some relatively minor procedural changes.  Now we’re ramping up to the most significant change  – the controversial change from a “first to invent” system to a “first inventor to file” system – which will be effective March 16, 2013.  I’ll take a separate look at the change from “first to invent” to “first inventor to file” and its potential impact in another blog post.  Today, however, we’re focused on the changes which take effect on September 16, 2012.

1. Third Parties Allowed To Submit Patents, Published Applications, and other Published Documents for Consideration

The Act allows any third party (even anonymously through a registered practitioner) to submit any relevant publications in another’s application for the patent examiner to consider generally before any substantive examination.  Accordingly, one may wish to monitor patent publications on a regular basis and, if possible, submit any prior art for the Examiner’s consideration in a competitor’s application to ensure that all relevant publications are considered during examination.

2. A Second Swipe At Business Method Patents

A transitional post-grant review proceeding has been created specifically to consider the validity of certain business-method patents. It applies to any “patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.”  Some software-related patents may also be exposed to this business method post-grant review.

3.  “Applicant” now can be the Assignee, not the Inventor

Under current practice, the inventors of a patent application are considered the “applicant”, even where the application is filed at the direction of the assignee of the application (typically the inventors’ employer). Under the new rules, the assignee can apply for the patent as the “applicant.”

4. Post-Grant Review Procedures Narrowed and Significantly More Expensive

There are several options for post-grant review of issued patents.  A poorly named “post-grant review” is available within 9 months of the issuance of the patent and the grounds for seeking such review can be any grounds of invalidity, with the exception of the requirement to disclose the best mode in the application.

After 9 months, a party can request an “inter partes review,” which replaces the current inter partes reexamination. Inter partes review of an issued patent is limited to challenges for novelty and non-obviousness where there is a reasonable likelihood that the petitioner will prevail on at least one claim.  Inter partes reexamination fees were $8,800, but the new inter partes review fees are $27,200.

In addition, the Act prohibits a post-grant review and inter partes review if the party filing has filed a related civil action before filing the petition.

5. Patent Owner’s Right To Supplemental Examination

Supplemental examinations are established for a patent owner “to consider, reconsider, and correct information believed to be relevant to the patent.” This new process allows patent owners the right to submit prior art to the USPTO without having to request reissue of the patent or put the patent through the traditional reexamination procedure.  Supplemental examination under this section of the Act is not available, however, if an allegation of invalidity over the subject art has already been made in a legal proceeding.

6. Changes to Patent Trial and Appeal Board

The Board of Patent Appeals and Interferences (BPAI) has been renamed the Patent Trial and Appeal Board (PTAB).  Among other rule changes to appeal practice, the applicant may now appeal to the Court of Appeals for the Federal Circuit (CAFC) from certain Board decisions.