The America Invents Act Is Coming

Inter Partes Review and Post-Grant Review Begin Sept. 16

Inter Partes Review and Post Grant Review, which are intended to be substitutes for more expensive in-court challenges to patent validity, commence September 16, 2012. Post Grant Review will initially be limited to certain business method patents, but will subsequently apply to all patents filed on or after March 16, 2013. The Patent Office has issued draft implementing rules, and a committee that includes representatives of our firm will be formally commenting on them. We are available to discuss whether the current inter partes reexamination procedure (which ends September 15, 2012), or the new Inter Partes Review and Post Grant Review, are more appropriate for your particular needs.

Ban On Multi-Defendant Patent Suits 

The new patent law prohibits patentees from suing multiple defendants in a single action (other than in ANDA cases), absent common questions of fact among the defendants that arise from the same allegedly infringing acts. Although courts may consolidate cases for pre-trial discovery and claim construction, the ban will require patentees to file and litigate separate actions, which will substantially increase costs. It remains to be seen, however, what effect the ban ultimately will have on suits filed by non-practicing entities.

New (And Increased) Patent Office Fees

Significant fee increases will also take effect starting September 16. Fees for filing ex parte reexamination requests will increase from approximately $2,520 to $17,750. Fees for Inter Partes Review and Post Grant Review are expected to range from approximately $25,000 to $90,000 or more, depending on the number of claims challenged. Notwithstanding these significant government fees, all of these procedures remain important tools in combating overly broad patents.