The Patent Trial and Appeal Board - Do I Have a Case?

Tuesday, September 24, 2013

The America Invents Act (AIA) was passed and signed into law in 2011, but many major provisions just recently took effect. This legislation has brought significant changes to the way the Board at the U.S. Patent and Trademark Office (PTO) hears cases. 

Why would a case come before the Board?
The Board had previously heard cases when an individual or company challenged a patent. Until the AIA took effect, this process was known as reexamination. Previously, the basis for bringing a challenge was usually prior art, in which one party contended that the new patent duplicated a previous patent, or that there was enough public knowledge or obviousness that the invention should not have been patented in the first place.

What’s new at the Board?
For one thing, the AIA eliminates interference proceedings, which previously decided contests among inventors who had near-simultaneous filings for the same invention. The new law establishes the United States as a “First Inventor to File” country rather than a “First to Invent” country. 
Replacing interference proceedings are several new mechanisms for challenging patents. These are intended to promote better and sounder patents, and to offer a less expensive and more rapid means of reexamining a patent than litigation in a District Court.

The new proceedings include:

  •  Inter partes review
  •  Post-grant review
  •  Covered business method patent review
  •  Derivation review

Inter partes review deals only with prior art, and is a mechanism for challenging a patent issued anytime in the past. For instance, a case now in process questions several patents held by the company that handles email technology for the Blackberry device. Prior art that had not originally been considered by the patent office has apparently been discovered.

Post-grant review is similar to inter partes review, but can challenge only recently issued patents, specifically within nine months of the date the patent is granted.

Covered business method patent review can determine whether a process leading to the manufacture of a product is patentable. The idea itself cannot be patented but, if it is truly an original process that leads to something tangible, the validity of the patent is more likely to be upheld, given its level of originality and other factors.

Derivation review would apply to a case such as the following: I have a novel idea, and I’ve devised an invention based on that idea. Just prior to filing with the patent office, I share this wonderful idea with a friend over coffee, and the friend devises an invention based upon my idea. I can challenge his patent or patent application with a derivation review, based upon his use of the information I shared with him.

What does all this mean to me? 
If you are facing an infringement lawsuit, you may seek to invalidate the patent in question by filing for a review with the Patent Trial and Appeal Board. The proceedings in District Court may be put on hold until the Board makes a decision. If the Board decides in your favor, your legal fees could be significantly reduced.

Inventors themselves may request a review before suing someone for patent infringement. It is a less expensive way to be sure an inventor’s patent is still valid, so that he or she may have more confidence before proceeding to District Court.

Another reason for a review before the Board is in the case of a startup company who wishes to use a patented process or technology, but is kept from doing so by the patent holder. If the “obviousness” of the original patent can be proven, then the patent may be invalidated, freeing the new business to market a product based on that technology or process. One example of this is the crustless peanut butter and jelly sandwich, patented in 1999 and marketed by Smuckers. When Smuckers enforced the patent, the alleged infringer filed a request for a review before the Board and won on the grounds of obviousness.

The Board vs. District Court 
These new proceedings make financial sense for some who would otherwise go to District Court. They are mechanisms designed to be quicker, more efficient, and less expensive. There is not as much allowance for the discovery phase, and the cost can be considerably less than full-blown Court proceedings. Is the Patent Trial and Appeal Board for you? That has to be determined, of course, by the particulars of the case.