The U.S. Patent and Trademark Office conducted various types of adversarial proceedings prior to the enactment of the America Invents Act (AIA). These proceedings included ex parte re-examination proceedings, inter partes re-examination proceedings, interferences and public-use proceedings.

The AIA replaced inter partes re-examination proceedings with inter partes review proceedings and replaced interferences with derivation proceedings. The AIA eliminated public-use proceedings. Ex parte re-examination proceedings remained intact after the passage of the AIA. The AIA created two additional types of adversarial administrative proceedings: post-grant review proceedings and covered business-method review proceedings.

This blog posting will discuss inter partes review proceedings, post-grant review proceedings, covered business-method review proceedings and derivation proceedings.

 

Post-Grant Review Proceedings and Inter Partes Review Proceedings

The AIA created two new types of adversarial administrative proceedings that could be applied to patents in all areas of technology. One type of post-grant review proceeding – an inter partes review proceeding – replaced inter partes re-examination proceedings. The other type of post-grant review proceeding is one that is similar to European-style opposition proceedings. The AIA created a broad statutory framework for these new proceedings and authorized the U.S. Patent and Trademark Office (USPTO) to promulgate regulations to govern those proceedings.

The key difference between the two proceedings is that a request for a post-grant review proceeding must be filed within nine months of the issuance of a patent or while any other post-grant review proceeding is pending. An inter partes review proceeding can be filed either after the nine-month time period or after any pending post-grant review proceedings have been terminated, whichever is later.

Other than the two different deadlines, there appear to be three key differences between the two types of proceedings. First, the threshold for triggering an inter partes review appears to be higher than the threshold for triggering a post-grant review. Second, the scope of issues that can be raised by a requester is broader because it includes defenses like lack of patentable subject matter, indefiniteness, lack of enablement and failure to comply with the written-description requirement. Third, the scope of discovery in an inter partes review is more narrow than the scope of discovery in a post-grant review.

One of the primary advantages provided by these two types of proceedings is that they allow the parties to conduct limited discovery. Consequently, an accused infringer can initiate these types of proceedings to reduce litigation costs and, in certain cases, exposure to potential damages. Another advantage to these types of proceedings is that certain decisions by the USPTO can bind the parties in subsequent litigation. In other words, certain parties can be prevented (or stopped) from making certain claims in subsequent litigation.

 

Transitional Business-Method Review Proceeding

The AIA also authorized the USPTO to create a “transitional” review proceeding for certain types of covered business-method patents. The AIA excluded business-method patents directed to “technological inventions,” which was a phrase that was subsequently defined by the USPTO.

Covered business-review proceedings are very similar to post-grant review proceedings. However, they are much less restrictive on accused infringers, which means that they can be a powerful alternative to litigation for practitioners of certain types of business methods. However, a petition to initiate a covered business-method review proceeding can only be filed by a party that has been sued for patent infringement or has been accused of patent infringement.

 

Derivation Proceedings

As indicated in my last blog post, the AIA also created derivation proceedings, which were meant to replace interference proceedings. Since patent applications that were filed prior to the enactment of the AIA (and for a limited period after enactment) could be subject to interference proceedings, interferences are in the process of being phased out and replaced by derivation proceedings.

The purpose of a derivation proceeding is to determine whether an earlier-filed patent application was derived from a later-filed application. However, the applicant for the later-filed application has a limited period of time to file a petition to initiate a derivation proceeding. The petition must be filed within one year after the publication of the earlier-filed patent application.

The two applications must claim the same invention or substantially the same invention. The petitioner must provide substantial evidence of derivation to initiate a derivation proceeding.