On September 16, 2012, numerous provisions of the America Invents Act (AIA) went into effect with the United States Patent and Trademark Office. These rules include new administrative trial provisions, the supplemental examination provision, the inventor oath and declaration provision and the citation of prior art and written statements provision. The new administrative trial provisions include inter partes review, post-grant review and a transitional program for covered business method patents, all of which are designed to provide third-parties that want to challenge the patentability of an issued patent with alternatives to district court litigation that are more timely and cost-effective. The supplemental examination provision affords applicants an opportunity to submit additional information relevant to the patentability of an issued patent that may protect a patent from an inequitable conduct charge. Under the inventor oath and declaration provision, assignees may now file a patent application. Finally, with respect to the citation of prior art and written statements provision, the USPTO will now be able to treat the claims in a patent consistent with how the patent owner represents the claims in proceedings before a court or the USPTO. According to David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, “These new AIA provisions now in effect give us tools to deliver cutting-edge technologies to the marketplace sooner, further reducing the backlog of patent applications, and getting high-quality patents issued faster.” Other provisions of the AIA, including the first-to-file provision, are scheduled to go into effect on March 16, 2013.
The USPTO received one of its first high-profile test cases for these latest provisions when Microsoft filed an inter partes review petition on September 18, 2012, asking the USPTO to invalidate a patent that its owner has accused Microsoft and other major companies of infringing. Microsoft included a declaration that nine of the claims in the patent should be invalidated because the claims contain nothing innovative when compared to the prior art. The USPTO will institute a review if Microsoft is able to convince the USPTO that there is a reasonable likelihood that Microsoft would prevail on at least one challenged claim, which may only address issues of novelty and obviousness. The board would then hold a mini-trial and issue a final determination within one year.