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Several key provisions of the America Invents Act (AIA) will be going into effect on September 16, 2012. The focus of many of these provisions is to improve the quality of patent examination as well as to provide enhanced review opportunities after issuance. This article is intended to bring to light some key aspects of these various provisions. Prior Art References
The U.S. Patent and Trademark Office (USPTO) has, at times, come under fire for issuing patents of questionable validity. One oft-cited cause is the lack of available relevant prior art references to assist USPTO examiners with evaluating an application. In an effort to alleviate this problem, the AIA has broadened the existing rules that allow a third party to submit potentially relevant references to the USPTO for consideration by the examiner. In particular, the window for submitting references has been increased from a maximum of two months after publication of an application to a maximum of the later of six months after publication or the mailing of a first office action. In addition, the submission must now include a concise description of the asserted relevance of each reference, which will further assist examiners with evaluating references. This provision will apply to patent applications filed before, on, or after September 16, 2012. Post-Issuance Proceedings
Various AIA provisions have been added to address potential issues that become evident after issuance. Currently, any person can submit patents and printed publications for inclusion in the USPTO patent file that are believed germane to the patentability of any claim of a patent. Such references can be used to later assist with various possible challenges to the validity of the patent. To provide a more complete record in the patent file, the AIA provides for the additional inclusion of written statements made by a patent owner before a federal court or the USPTO that are directed to the scope of any claim of the patent. This provision will apply to patents filed before, on, or after September 16, 2012.
Business Method Patents
The transitional program for business method patents is likely to have a large impact on both patent holders and accused infringers. Ever since the U.S. Court of Appeals for the Federal Circuit deemed business methods as patentable subject matter in the State Street Bank1
case in 1998, business method patents have been widely criticized as issuing without sufficient vetting. At the time State Street Bank was decided, the USPTO lacked a database with sufficient prior art. Therefore, examiners had little prior art to provide a basis for rejecting the claimed subject matter. Although their database has vastly grown over the years, countless business method patents have already issued that are being asserted against alleged infringers.
In the case where a person has been sued or charged with infringement under a covered business method patent, he or she may take advantage of the new transitional program for business method patents. At this time, a covered business method patent would include methods or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, with the exception of patents claiming technological inventions. This program allows an accused infringer to petition for a validity challenge of the asserted patent on almost any ground, such as utility, novelty, written description, and obviousness. In contrast to a validity challenge through the current reexamination process, the transitional program allows for the submission of non-published evidence of knowledge or prior use. As the field of business methods does not lend itself to published prior art in many cases, this provision can be of considerable benefit to an accused infringer. Covered patents issued before, on, or after March 16, 2012 can take advantage of this provision. 1 State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998).