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The Importance of Patent Monitoring in a Post-AIA World

It is the third anniversary of the full implementation of the America Invents Act (AIA). The AIA brought important changes in the United States patent system. These changes include new procedures for challenging issued patents and pending applications. To take timely advantage of these important new procedures, it is imperative for companies to implement a thorough program that includes monitoring of the patent filings and patent activity of its current and potential competitors.

New Procedures for Challenging Patents and Applications at the USPTO

The new procedures for challenging patent and patent applications at the United States Patent and Trademark Office(USPTO) include:

  • "Post-Grant Review" (PGR) procedures for challenging newly issued patents on virtually any ground (e.g., 35 U.S.C. §101 ground of subject matter ineligibility; 35 U.S.C. §102 and 103 grounds based on any type of prior art, including prior use; and 35 U.S.C. §112 grounds for lack of written description, lack of enablement and indefiniteness). A PGR petition must be filed with the USPTO within nine months of a patent's issuance.
  • "Covered Business Method (CBM) Review" procedures for challenging both pre-AIA and post-AIA patents, which meet certain criteria, based on subject matter ineligibility, lack of written description, lack of enablement and indefiniteness. A CBM petition can be filed with the USPTO any time during a patent's lifetime.
  • "Third-Party Submission" procedures, which allow anonymous submission of prior art during the prosecution of a competitor's pending application. The Third-Party Submission includes a description of the prior art's relevance to the claims in the pending application and can be filed during a limited time window—within six months of the publication of the application or a first substantive Office Action, whichever is later, and before a notice of allowance.
  • "Derivation" proceedings, which allow a challenge to inventorship, if filed within one year of publication of a patent application.

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