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

Timothy Bianchi

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