The Leahy-Smith America Invents Act (AIA), signed into law on September 16, 2011, brings landmark changes to U.S. patent law, including expanding the options available for challenging a patent after it has been granted. Among these expanded options are the establishment of post-grant review proceedings, special transitional post-grant review of business method patents, and supplemental examination. The new options available under the AIA provide strategic opportunities for patentees and third-party challengers alike. These changes will be especially significant for patent litigants as the legislation may change the venue for patent validity challenges from district courts to the PTO, automatically stay some disputes, and place time limits on their initiation. The new law raises a variety of strategic questions for both patentees and those seeking to bring new products to the market:
- What are the new post- grant options, how will they be implemented, and when?
- How will current reexamination practices evolve? How does the AIA alter litigation strategies and the strategic use of patent reexamination parallel to litigation?
- What are the new grounds for post-grant review?
- What is the procedure for review?
- What must be demonstrated for inter partes review?
- What steps can IP owners take to meet the requirements of the new post-grant proceedings?
- Matthew Kreeger, Partner, Morrison & Foerster LLP
- Richard Hung, Partner, Morrison & Foerster LLP
- Laura Johnson, Vice President of IP, DexCom, Inc.
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