Wednesday, March 27, 2013

America Invents Act - Inter Partes Review Available Upon Issuance - Eliminating the Nine Month Dead Zone

The USPTO revised the final rules of practice with respect to inter partes review petitions challenging first-to-invent patents and reissue patents on March 25, 2013. The rules implement the amendment to 35 U.S.C. 311(c) that eliminated "dead zones" by allowing inter partes review challenges to first-to-invent patents and reissues during the first nine months after issuance.

As stated by the USPTO: "Under the AIA, as originally enacted, a petition for inter partes review could only be filed after the later of either: (1) The date that is nine months after the issuance of an original patent or reissued patent; or (2) if a post-grant review is instituted, the date of the termination of such post-grant review. Notably, inter partes reviews were available only for patents that had been issued for at least nine months. Additionally, post-grant reviews were not available for first- to-invent patents and reissued patents where the original patent was no longer eligible for post-grant review (35 U.S.C. 325(f)). See sections 6(d) and (f)(2) of the AIA. That created two nine-month "dead zones,'' namely first-to-invent patents and reissued patents could not be challenged in an inter partes proceeding before the Office during the first nine months after issuance."

For further details see the USPTO release (here).

Copyright © 2013 Robert Moll. All rights reserved.