America Invents Act Updates Take Final Form

In a last-minute decision for the 112th Congress, the House of Representatives approved an America Invents Act (AIA) technical-revisions bill as amended by the Senate (H.R. 6621) on January 1, 2013. President Obama is expected to sign the bill without delay. While the bill provides for a number of non-controversial clerical corrections, it also creates some key substantive changes. Among those key changes are: 1) the elimination of “dead zone” periods during which none of the new post-grant challenge mechanisms would have been available; and 2) clarification on patent-term adjustment calculations for national phase applications filed under 35 U.S.C. § 371.

Post-Issuance Review “Dead Zones” -

Under the AIA’s original provisions, post-grant review (PGR) challenges may be raised only against patents that issue on applications filed on or after March 16, 2013 (“first-to-invent” patents). The new inter partes review (IPR) procedure replaces the now-defunct inter partes reexamination process, but may be invoked only beginning nine months after patent issuance. As a result, patents that issued on applications filed prior to March 16, 2013, could avoid a PGR challenge and enjoy a nine-month gap before an IPR challenge could be initiated. The AIA corrections bill eliminates this “dead zone” by allowing immediate IPR challenges to patents that only claim subject matter that was filed before March 16, 2013.

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