April 2, 2013
On March 25, 2013, the U.S. Patent and Trademark Office (USPTO) published a rule to implement the changes to the inter partes review procedures that were signed into law on January 14, 2013. The new rule eliminates the nine-month waiting period for filing an inter partes review petition challenging patents that were filed under the pre-America Invents Act (AIA) “first-to-invent” system. The rule clarifies that first-to-invent patents and reissue patents are eligible for inter partes review immediately upon issuance.
For patents filed under the pre-AIA first-to-invent system, the nine-month period after the issuance of the patent was previously termed a “dead zone.” The law formerly provided for inter partes reexamination of such patents. On September 16, 2012, however, the law changed to disallow inter partes reexamination requests filed after that date, and instead provided for inter partes review of such patents. But because inter partes review was not available until nine months after the issuance of the patent, third parties were unable to raise challenges within the USPTO during those nine months—hence, the "dead zone." A similar "dead zone" existed for reissue patents.
The new rule implements procedural mechanisms for the elimination of these "dead zones." The USPTO now allows third parties to seek inter partes review during the first nine months after issuance of a first-to-invent patent or reissue patent. The new rule also provides that if post-grant review proceedings have been implemented, inter partes review proceedings may not begin until the termination of the post-grant review proceedings.
--Written by Fitch Even attorney Amanda Lowerre O'Donnell
Fitch Even IP Alert