Posts Tagged ‘America Invents Act’

Patent Due Diligence and Evaluation After the AIA

Monday, July 18th, 2016

Many factors must be considered for due diligence and valuation of a patent portfolio. The patent owner’s desire to have broad claims that capture a large number of infringements must be tempered against its need for claims that will not be deemed invalid in view of prior art.

Before the America Invents Act (AIA), patents were crafted to survive federal court scrutiny.  An assertion of broad claims was more likely than sweating the details about validity because it was harder to prove a patent was invalid than it was to prove it was infringed.

With the enactment of the AIA, the Patent Trial and Appeal Board (PTAB or Board) is empowered to review patent validity in administrative trials (AIA Trials). Patents are more readily invalidated in these AIA Trials using a lower burden of proof than required in federal district court. Furthermore, the Board’s administrative patent law judges have both scientific and patent law training, which enables them to scrutinize patents more carefully than a typical district court judge or jury.

The “new normal” is that a patent’s validity is likely tested in the PTAB (in IPR, CBM, or PGR) before it is enforced in federal district court. Savvy companies are taking extra measures to review their patents carefully before acquiring and asserting them to reduce or avoid the cost and delay that comes with PTAB proceedings.


  • RISK: AIA Trials statistically favor the Petitioner/Defendant. Don’t invest in a portfolio or a litigation that won’t deliver value.
  • DELAY: Patent Office Trials are one more reason for a stay of parallel federal district court proceedings. Justice delayed is justice denied.
  • COST: Patent owners dragged into an IPR, PGR or CBM can expect six figure defense costs with the best-case outcome being that the claims are upheld—which is essentially the patent’s original status.
    rarely allowed in IPRs, CBMs, and PGRs. Don’t expect to fix defective patents without a lengthy proceeding that is conducted after the AIA Trial.
  • HARM TO FUTURE ACTIONS: If claims survive the AIA Trial validity challenge, admissions may be made that could reduce the effectiveness of any district court infringement action.

Poorly crafted patent claims are typically cancelled in an AIA Patent Trial. High quality patents are more likely to bypass review, and those patent owners avoid the cost, delay, and risk of defending weak claims in AIA Trials.

To get a good read of a patent’s ability to survive AIA review, seek the opinion of patent counsel that is experienced in patent prosecution, patent litigation, and post-grant proceedings.

In case you missed it, I put together a simple 2 minute video with 4 tips to make your patent portfolio AIA-ready.

4 Tips to Make Your Patent Portfolio AIA-Ready

Wednesday, July 13th, 2016

The America Invents Act (AIA) has changed the way that patents are enforced. In traditional patent litigation, a patent was drafted to perform in district court. After the AIA, when patents are asserted, they are first challenged in administrative proceedings before the Patent Trial and Appeal Board (PTAB). These proceedings, called IPRs (inter partes reviews), PGRs (post-grant reviews), and CBMs (covered business method reviews), are conducted by skilled administrative law judges who have both scientific and legal experience. Patents that fail in these more-stringent reviews will never get a day in court, so patent applicants should be adapting their patent strategies to make their patents AIA-ready.

Check out our video for tips on how to make stronger patents that will withstand AIA reviews.

PTO, PTAB and AIA History in the Making Today, September 16, 2012

Sunday, September 16th, 2012

Today the PTO received its first petitions for inter partes review (IPR) and covered business method patent review (CBM) pursuant to the America Invents Act (AIA).  We are in a kind of second phase of implementation of the AIA that phases out inter partes reexamination and that makes IPR and CBM post-issuance reviews available for patents that qualify.  A series of posts will follow that better lay out the considerations for using these third party challenges to patents.

The first phase of AIA implementation was in the enactment of the AIA last year, which changed the standards for inter partes reexamination and phaseout of inter partes reexamination.  The third phase of AIA implementation occurs when Post-Grant Review (PGR) becomes a viable review tool.  But PGR is designed to review patents granting from applications filed in the new First Inventor to File (FITF) system.  That means PGR will become useful for patents issuing from patent applications that are filed on or after March 16, 2013.  Thus, the third phase of implementation involving PGR may kick off on March 16, 2013, but PGR will be on the sidelines until a patent grants from an FITF application and is challenged using PGR.

There are so many things to write about this new world of patent review it is hard to know where to begin.  Today I feel it is appropriate to recognize the amazing achievements by PTO Director Kappos and his Office in rapidly implementing this portion of the AIA.  An amazing coordination of work was needed to come up with proposed and final rules, to address many questions and comments, and to provide critical information dissemination and training.  I feel that the quality of attention to detail, listening, and helpful communications by the Office have never been higher in my almost-20 years of patent practice.

Of course, the true test will occur when these trials are conducted in the PTAB, and we can see firsthand the quality of decisions.  Regardless of whether you are a critic or supporter of the AIA, you have to give the PTO an “A” for effort, attention to detail, communications, and timeliness for launching IPR and CBM in this phase of AIA implementation.

Patent Challengers get additional Preissuance Challenge Option after Leahy-Smith Bill Passes

Monday, September 5th, 2011

Pre-Issuance Challenge Option Added

Section 8 of the Act provides for additional pre-issuance submissions by third parties by amending 35 U.S.C. 122.  Written submission of the relevance of a patent application,  patent, published patent application, or other printed publication must be made before the Notice of Allowance or the later of (1) six months after the date of publication of the application under section 122,  or (2) the date of first rejection under 35 U.S.C. 132.  The submission must set forth a concise description of the asserted relevance of each document submitted, include the necessary fee, and include a statement that the submisson was made in compliance of the section.  This option shall take effect one year after enactment of the Act and applies to any patent applications filed before, on, or after the effective date.

However, this option must be used carefully.  If the submission fails to convince the ex parte prosecution Examiner that a document is relevant, it may complicate a later challenge of the patent using similar grounds.  The test for initiating a post-grant review is that “more likely than not that at least one of the claims challenged is unpatentable.”  And for inter partes review, the test is that “there is a reasonable likelihood that the petitioner will prevail with respect to at least one claim challenged.”  Thus, a poorly postured preissuance submission can complicate acceptance of a later petition for a post-grant proceeding.


Post-Grant Review and Estoppel in the Current Patent Reform Bill

Monday, August 15th, 2011

When the Senate returns from recess next month it will be debating patent reform, and in particular the Leahy-Smith  America Invents Act.  A copy of the redlined version passed by the House is found here.  (thanks to Brad Pedersen of Patterson Thuente Christensen Pedersen, P.A. for providing this version).  Don’t let the amount of redlining fool you because many of the amendments amount to relatively minor rewriting of provisions.  The House and Senate bills are substantially similar.

This is a controversial bill for many reasons.  Some think that it goes too far in adopting a first-inventor-to-file approach, as opposed to the current first-to-invent system.  Some don’t think it goes far enough with respect to patent litigation reform.  There are also concerns that whatever this bill provides, Congress will not give the Patent Office enough financial support to carry out its many provisions.

Whether you agree with the proposed patent reform or not, there is a fair chance this legislation will become a reality soon.  The current version of the patent reform bill (both House and Senate) has a provision for Post-Grant Review that was discussed generally in an earlier post.  The post-grant review option allows persons other than the Patent Owner to petition the Patent Office to review a patent on several grounds if filed timely (currently, within nine months of issue of the patent).  This review can be petitioned on more grounds than those available in traditional reexamination (i.e., the grounds relate to patentability in general and are not limited to anticipation and obviousness grounds based on printed publications and patents).  But this option also includes an estoppel rule to those who petition for such review.  The estoppel bars the Petitioner from asserting in a later action (administrative or civil) “any ground that the Petitioner raised or reasonably could have raised during that post-grant review.” 35 U.S.C. 325(e).  Therefore, the estoppel arising from post-grant review is substantial.  [Note: estoppel does not apply to a petitioner exiting the process via settlement and requires a final written decision under 35 U.S.C. 328.]

This approach gives challengers more options for correction of an issued patent than litigation and traditional reexam.  In my next post we will explore some of the issues that this estoppel makes if adopted substantially as proposed in the redlined version of the Leahy-Smith America Invents Act.