35 U.S.C. § 311(c), as implemented by the America Invents Act ("AIA"), permits a petition for inter partes review only after the later of:
- Nine months after issuance of the patent/reissue patent; or
- After the termination of a post-grant review (if initiated).
Post-grant review is available only for patents with an effective filing date on or after March 16, 2013. Thus, under the AIA, any recently-issued or soon-to-issue patent is not eligible for post-grant review because it will have an effective filing date prior to March 16, 2013. Moreover, under the original statute, inter partes review was not available for these patents until at least nine months after issuance, creating a "dead zone" in which neither of the new post-grant review procedures were available (and the old inter partes reexamination was abolished September 16, 2012).
In December 2012, Congress passed a "technical amendment" (H.R. 6621) to, inter alia, eliminate the 9-month waiting period for inter partes review and allow petitions for inter partes review on patents with an effective filing date prior to March 16, 2013, immediately upon issuance of the patent. Specifically, the amendment provides that "Section 311(c) of title 35, United States Code, shall not apply to a petition to institute an inter partes review of a patent [with an effective filing date prior to March 16, 2013]." (H.R. 6621, Section 1, para. (d)(1)).
President Obama signed H.R. 6621 on January 14, 2013. Thus, the original 9-month statutory waiting period has been eliminated for all currently issued patents and those with an effective filing date prior to March 16, 2013. Inter partes review proceedings can thus be immediately filed on these patents.
The broadened availability of the inter partes review procedure may be relevant to strategic consideration of asserting or challenging recently or soon-to-issue patents.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
