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America Invents Act

The America Invents Act

The Leahy-Smith America Invents Act (AIA), signed into law on September 16, 2011, is the biggest change to U.S. patent law in more than 60 years. This Act harmonizes the US patent system with Europe and Asia by, among other things, (1) granting patents to those who file first, as opposed to those who invent first, and (2) providing different mechanisms for third parties to challenge patents after their grant.

The procedures outlined in the AIA concurrently provide both opportunities and risks, and it is important for patentees and challengers to understand how to take advantage of the opportunities and avoid the risks. Discovery will be allowed, and some of the proceedings can be concluded through settlement. It will be critical for patent owners to respond immediately to post-grant and inter-partes review petitions with a comprehensive legal, factual, and procedural strategy to present an effective defense. Accomplishing this requires a good understanding of the USPTO rules. Under this new statutory regime, the USPTO, will become an important venue for challenging a patent’s validity because the AIA provides for more efficient and cost-effective avenues for challenging the validity of a patent, compared to U.S. district courts. Specifically, the AIA provides for:

• Post-grant review, comparable to European opposition proceedings, for challenging patents within nine months of their issuance.
• Inter-partes review, which will replace inter-partes reexamination, for challenging patents nine months or more after their issuance.
• New pre-grant derivation proceedings; and
• New Supplemental Examinations.

Unlike current reexamination, the AIA will allow for the parties to voluntarily settle a post-grant proceeding and an inter-partes review at any time prior to the final written decision of the USPTO Patent Trial and Appeal Board. This ability significantly increases the leverage of patent challengers in negotiations, and will encourage the use of the new proceedings as an instrument in licensing negotiations, or settlement of ongoing litigation. Apart from direct attacks on the validity of patent claims, the new proceedings will be valuable in licensing negotiations, settlement of disputes, and in managing district court litigation.

Sughrue Mion, a leading intellectual property firm, can help you navigate the intricacies of the AIA, as it has helped thousands of companies around the world navigate the complexities of patent law and USPTO procedure for more than 50 years. Many of our attorneys have worked at the USPTO and have an insider’s knowledge of practice before it. Additionally, Sughrue’ s unmatched experience in patent interference proceedings provides an advantage to its clients with the new post-grant procedures. Please contact us to discuss how we can assist you and your company in taking full advantage of the AIA.