by Dennis Crouch

September 16, 2012 is a big date for parties considering a post-grant challenge to someone else’s patent. Eight things that your clients should know:

1. End of Inter Partes Reexamination: September 15, 2012 is the last date to request inter partes reexamination under the old system. That is to say, inter partes patent reexamination filings will no longer be accepted on September 16, 2012. Parties who understand and find the current system valuable may want to accelerate their filing timeline accordingly.
2. Beginning of Inter Partes Review: The new inter partes review system begins on September 16, 2012 and applies to any issued patent that has been issued for at least 9–months.
3. Inter Partes TRIAL: Despite the similar name, the procedures involved with an inter partes review will be quite different from inter partes reexamination. In short, the review will be more like a trial and heard by a tribunal of administrative patent judges rather than being considered by an examiner.
4. $$$ Inter Partes Expense $$$: The trial features will certainly make inter partes reviews significantly more expensive based on greater attorney fees. In addition, the fee for filing an inter partes review petition is $27,200 (plus $600.00 for each claim over 20). Current inter partes reexamination fee is $8,800.
5. $$$ Ex Parte Reexamination $$$: The AIA barely changes the ex parte reexamination process. Those reexaminations can still be requested by third parties. The major change, however, is that the fee for ex parte reexamination will jump on September 16, 2012 from $2,520 to $17,750. What is $15k worth to your client?
6. Post Grant Review: Except for “covered business methods,” the post grant review system (with its broad-base of potential challenges) is on hold until 2013. In particular, PGR will only be available to challenge granted patents that are filed as applications after the March 16, 2013 first-to-file changeover
7. Business Method Post Grant Review: The PGR system does open on September 16, 2012 to challenge “covered business methods.” These challenges are limited by the statute to only patents that cover some sort of financial data processing and that do not involve a novel technological feature or solution.
8. Supplemental Examination: Although perhaps out of place on this list (b/c not a third party challenge), supplemental examination also becomes available on the 16th of September 2012. This process can cure inequitable conduct that committed during the original ex parte prosecution.