The second phase to the America Invents Act commenced in September 2012. According to an excellent article in the New Jersey Law Journal entitled “In-House Counsel Prepare for Phase 2 of America Invents Act”, http://www.law.com/corporatecounsel/PubArticleCC.jsp?id=1202571463821&InHouse_Counsel_Prepare_for_Phase_2_of_America_Invents_Act,
this phase not only contains new methods for challenging patents, but places a greater emphasis on closely supervising existing patents.
One of the most significant provisions of the second phase noted in the article is the
right of third-parties to make early submissions objecting to an application.
Any third party who disagrees with the issuing of a patent can submit past art,
an existing patent or a printed publication of any sort to be considered by the
patent examiner. This provision could potentially help avoid litigation by allowing
an objecting party to submit important information relating to their objection to
the patent before it is issued.
Another vital addition to the AIA is a provision which permits third parties to demand
an “inter partes” review of any patent issued. The article describes this as is
a small hearing which allows current patent legitimacy to be challenged. The
implementation of this provision is important because it streamlines and speeds
up the process and places a statutory time limit on the review of patents (a
ruling must be determined within one year of a patent’s issuance)
A modification to the process of reviewing patents after they are issued is also part
of the new law. Third parties are now able to request a post grant review of
any current patent. Unlike inter partes review
which is centered on existing published patent applications, post grant review is
obtained after the grant of a patent and may be based on any source of
invalidity. This review has a time limit as well; it must be requested within
the first nine months of a patent being issued Id.
Another amendment to the AIA that will eliminate the possibility of litigation is that
“patent owners will be able to request a supplemental examination of their
issued patent. If the examination is granted, the owner can submit prior art to
the USPTO that was not submitted in the initial patent application”.
Overall, the second phase offers cost and time effective alternatives to district court
litigation. Nonetheless, in-house counsel needs to be aware of a few factors
when executing the new provisions. Whether it is in their best interest to
demand for any sort of review must be strategically considered. Shuchman also
writes that timing must also be carefully contemplated. Additionally, in-house counsel should stay vigilant and watchful over competitor and NPE patents.