Post-grant Proceedings under AIA

• Author: Elizabeth Rodriguez - Sean Solberg
• Pages: 65-79

Jason T. Nickla and Emily Harris1

The Leahy-Smith America Invents Act of 2011 (AIA)

2

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.

4

Fur-

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.

65

Chapter 3

Post-grant Proceedings under AIA

Impact on University Technology Transfer