PATENT REFORM ACT OF 2011 – PART 4 – THIRD PARTY CHALLENGES

By Scott Nyman

During the past few articles, I have been discussing different aspects of the Patent Reform Act of 2011 as part of a series of articles. As a refresher, the Senate recently voted to pass the Act with a 95-5 vote. Now, a sister bill is currently making its way through The House of Representatives.

The Patent Reform Act of 2011 proposes new policies to reform (for better or worse, depending on your view) the way the U.S. examines, allows, and enforces patents. The U.S. Senate and House bills are now being called the America Invents Act of 2011. For the sake of consistency, I will continue to refer to the bill as the Patent Reform Act of 2011 in these articles.

Today, I will cover the provision of the Patent Reform Act of 2011 as it relates to third party rights. In the next article, I will finish up the series by covering the remaining topics of proposed reform in the Act. Of course, I will continue to follow the progress of the Patent Reform Act as it makes its way through the House and possibly into law.

The Patent Reform Act of 2011 includes new provisions that affect how a third party may challenge a patent or application through the USPTO. The new provisions include avenues for a third party to present a challenge during the examination and after issuance of a patent. During examination, the Patent Reform Act of 2011 proposes allowing a third party use Pre-Issuance Third-Party Submissions to challenge an application. After a patent has been issued, a third party may challenge the patent via a Third-Party Requested Post Grant Review or Inter Partes Review Proceedings. With the inclusion of these new challenges available to third parties, the Patent Reform Act of 2011 will effectively expand the possible influence of the third party.

With the new Pre-Issuance Third-Party Submissions provision, a third party would be able to submit previously published patents, applications, and other publications to the USPTO to be considered by the Examiner while examining the application for patentability. The third party may also include a description of how the submitted publications are relevant to the examination of the application.

The Third-Party Requested Post Grant Review would permit a third party to challenge the validity of a claim in an issued patent. This proposed proceeding shares a number of similarities with the reexamination proceedings in existence under the current patent system. However, under the proposed Third-Party Post Grant Review, a third party must request the review within nine months of issuance of a patent.

After the nine month period for Post Grant Review has expired, a third party may file for an Inter Partes Review Proceeding under the proposed provisions of the Patent Reform Act of 2011. This new inter partes proceeding would replace the inter partes reexamination of the current system, limiting the review to considering only novelty and obviousness issues.