President Obama has signed into law technical revisions to the Leahy-Smith America Invents Act (AIA). The AIA, which was enacted on 16 September 2011, makes significant changes to the US patent system, including those outlined in the article on our website here.
The revisions comprise straightforward clerical corrections but also substantive changes which include in particular elimination of “dead zone” periods, within which patents were not immediately challengeable at the United States Patent and Trademark Office (USPTO) under new post-grant mechanisms introduced by the AIA, and clarification as to how patent term adjustment is to be calculated for patents granted on US national phases of international patent (PCT) applications.
Elimination of Post-Grant Dead Zones
There are two mechanisms for a third party to challenge a patent at the United States Patent and Trademark Office, these being Post-Grant Review and Inter Partes Review. These forms of review, which should generally be faster and cheaper than litigation (and which are discussed in the article on our website here), were implemented under the AIA on 16 September 2012, to replace the inter partes reexamination procedure.
Post-Grant Review can only be sought within nine months following issuance of the patent but is presently only available for business method patents. It will be available for other (non business method) patents only if they have an effective filing date of 16 March 2013 or later.
Inter Partes Review can be sought in respect of a patent regardless of its date, but originally could only be initiated as of the later of nine months from the date of grant of the patent or the date of conclusion of any Post-Grant Review proceeding in respect of it. As a consequence, neither form of review was available to prospective challengers of non-business method patents granted on or after 16 September 2012 and having an effective filing date earlier than 16 March 2013. These patents fell within a “dead zone”.
As a result of the revisions, the nine-month waiting period, commencing at grant, for initiating Inter Partes Review has been removed. Inter Partes Review can now be requested in respect of any patent from the date it is granted.
AIA Patent Term Adjustment Provisions Clarified
US statute provides for patent term adjustment (PTA) to compensate patent owners where there have been excessive delays on the part of the USPTO in prosecution of their patent applications. PTA can be awarded in respect of various delays, including where a period of time which has elapsed since the filing date of the patent application exceeds a certain amount. The AIA introduces new provisions regarding calculation of PTA for such delays but there has been uncertainty as to the interpretation of those provisions where the patent application is the US national phase of a PCT application. The “filing date” of such an application is generally the date of “commencement of the national stage”, which is typically 30 months from the earliest priority date of the PCT application (even if the national phase is initiated before that date), in the absence of an express request by the applicant that it be otherwise. The original wording of the new provisions suggested the “filing date” for the purposes of calculating PTA could be the date of filing of the PCT application, which is often 18 months earlier than date of commencement of the US national stage. The revisions confirm that it is the date of commencement of the national stage which constitutes the “filing date” for the purposes of calculating PTA.