Post-grant Proceedings under AIA

AuthorElizabeth Rodriguez - Sean Solberg
Jason T. Nickla and Emily Harris1
The Leahy-Smith America Invents Act of 2011 (AIA)
developed several new proceedings
for addressing the validity of patents after issuance, all of which took effect on September
16, 2012. At that time, the AIA also phased out the pre-AIA inter partes reexamination
proceedings, as it was believed that inter partes reexamination had not proven to be more
efcient or cost-effective than traditional patent litigation. The new post-issuance pro-
ceedings include post-grant review (PGR), inter partes review (IPR), and the transitional
program for covered business method (CBM) patents. An additional proceeding, called
supplemental examination, gives patentees a new option for cleansing issued patents of
potential inequitable conduct issues.
In its rst year, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trade-
mark Ofce (USPTO) has proven to be a very popular venue. As of September 3, 2013,
the USPTO had received 468 IPR, 48 CBM, and 0 PGR petitions.3 With a total of 517
proceedings, the PTAB has the third-largest patent litigation caseload in the country.
ther, the number of challenges will increase over time as companies become comfortable
with the rules and the PGR proceedings (which are expected to be comparable to oppo-
sitions in Europe) become available.
1. Jason T. Nickla is the Director of Intellectual Property at the University of Nebraska Medical Center. Emily
Harris is a Senior Shareholder with Davis Brown Law Firm, where she practices patent and trademark law. This
chapter reects the personal views and thoughts of Nickla and Harris and is not to be construed as representing
in any way the views or advice of the University of Nebraska or Davis Brown Law Firm. The content is solely
for purposes of discussion and illustration and is not to be considered legal advice.
2. Pub. L. No. 112-29 (Sept. 16, 2011).
3. America Invents Act Second Anniversary Forum, U.S. Patent and Trademark Ofce 172 (Sept. 16, 2013),
http:// www .uspto .gov /aia _implementation /aia _second _anniversary _forum _slides20130916 .pdf.
4. Id. at 176.
Chapter 3
Post-grant Proceedings under AIA
Impact on University Technology Transfer

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