An act to streamline, harmonize US patent law - II

Section 6

Inter partes review

Amends 35 USC § 311 to replace inter partes re-examination with “inter partes review” allowing third party to challenge validity or scope of an issued patent only on a ground that is permissible under 35 USC § 102 and 103. The review must be filed within nine months after grant or reissuance of patent or after the grant of termination of post-grant review. Prior art submissions are limited to patents and printed literature.

Post grant review

Enacts 35 USC § 321 to allow third party (petitioner) to institute a post-grant review for an issued patent. The review must be filed within nine months after grant or reissuance of patent. This reform will permit third party to challenge the validity or scope of patent based on any ground of patentability and prior art submission is not limited to patents and printed literature. Importantly, in the case of both post-grant review and inter partes review proceeding, the third party will be estopped from raising similar invalidity arguments in subsequent USPTO or the International Trade Commission (ITC) or litigation proceedings that were raised or reasonably could have been raised during the review.

This reform will now allow the US to have post-grant opposition procedure similar to Europe and India. Amendments made to section 6 will come in effect 1-year after the date of enactment, i.e. September 16, 2012 and will be applicable to any patent issued before or after the effective date.

Section 7

Patent Trial and Appeal Board

Amends 35 USC § 6 to existing Board of Patent Appeals and Interferences with newly formed “Patent trial and Appeal Board” to hear appeals and conduct derivation, inter partes review and post-grant review proceedings. The Patent Trial and Appeal Board will be having a panel of at least three members.

Appeal to Court of Appeals for the Federal Circuit

Amends 35 USC § 141 to permit either party to appeal the Patent Trial and Appeal Board adverse decision only to the US Court of Appeals for the Federal Circuit. 

Amendments made to section 7 will come in effect 1-year after the date of enactment, i.e. September 16, 2012 and will be applicable to proceedings commenced on or after the effective date.

Section 8

Preissuance submission by third parties

Amends 35 USC § 122 to permit third party to submit, for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing within six months of publication of the application.

Amendments made to section 8 will come in effect 1-year after the date of enactment, i.e. September 16, 2012 and will be applicable to any patent application filed before or after the effective date.

Section 9

Venue

Amends 35 USC § 32, 145, 146, 154(b)(4)(A) and 293 to shift default venue from United States District Court of Columbia to “United States District Court for the Eastern District of Virginia.”

This amendment is in effect immediately and will apply to any civil action commenced on or after the effective date.

Section 10

Micro entity defined

Enacts 35 USC § 123 to include a new class of inventor “micro-entity” which has filed no more than four applications, and has gross income below a designated level without having transferred ownership interest in the application to an entity with gross income exceeding such limit. This provision is in effect immediately.