One of the new features of the AIA is the Post-Grant Review (PGR), often referred to as a third-party opposition. PGR allows any party to challenge any new or reissue patent.
Starting with patents issued having a filing date on or after March 16, 2013, an opposer will have a nine-month window to submit to the Director of the Patent Office a petition to cancel one or more claims on the basis of invalidity. Compared to ex parte or inter partes reexaminations previously available, PGR allows a broader scope of information to be used as evidence, including patents, printed publications, commercial sales, and public use.
Once the petition is filed, the Director determines whether it is more likely than not that at least one of the challenged claims is unpatentable or that the PGR would resolve an unsettled legal question important to the patent system. The Director must issue this non-appealable decision within three months of the patent owner’s response or before the last day the patent owner may file a response. Once instituted, PGR is adjudicated by what will become the Patent Trial and Appeal Board.
Another useful tool for opposing issuance of a patent to a competitor is Third-Party Submissions (TPS). Previously, the opportunities were very limited for a third party to submit prior art to the Patent Office against a pending application because of a short filing deadline and the inability to include any analysis of the submitted prior art. Under the AIA, preissuance submissions will become a powerful tool because some of these disadvantages have been eliminated.
Under the new proposed rules, the deadline for the submission will be the earlier of 1) the date of the notice of allowance or 2) the later of six months after publication of the application or the date of first rejection of any claim by the examiner. So generally speaking, the deadline for a TPS will be the date of the first office action. The documents submitted must be “of potential relevance to the examination of the application,” which means that the documents need not be “prior art”—any relevant documents can be submitted for consideration by the examiner. A concise description of the relevance of each document must be provided. The proposed rules allows for three “free” submissions. If more than three documents are submitted, a fee of $180 for each ten documents is required. Once the TPS is submitted, the applicant will receive notice of any such submission in the first office action.
PGR and TPS will enhance the value of monitoring competitor filings. These third-party challenge mechanisms within the Patent Office could afford quicker resolution than litigation in federal courts. Thus, vigilantly monitoring patent applications filed by and patents issued to competitors in order to timely file PGR or TPS may be more cost effective than waiting until a competitor files an infringement suit.
Yon S. Sohn is an intellectual property attorney at Carstens & Cahoon, LLP, who practices in all areas of intellectual property law with a focus on patent law.
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By Yon S. Sohn