It’s been five years since the enactment of the America Invents Act (AIA) which became law in 2011. Time has rocketed by! When it became law, the AIA was acclaimed as the most important patent legislation since the Patent Act of 1952. Most patent industry leaders discount the American Inventor’s Protection Act (AIPA) of 1999, enacted only a few years earlier. And no one believed that the patent legislation weary Congress would be debating new patent reforms almost immediately after the AIA.
While there were several provisions enacted by the AIA the most notable were the ramped up post grant review procedures: Post Grant Review (PGR); Inter Partes Review (IPR) and the Transitional Covered Business Method procedure (CBM).
PGR allows a petitioner to challenge an issued patent on any statutory ground. The basis for an invalidity determination under this process can include 101, 102, 103 or 112 or any other statutory basis under which a claim can be rejected. The patents that qualify for this procedure must be based upon applications filed under the new first to file system, so we are just beginning to see some results from these challenges. The post grant procedures are only available for the first nine months after the patent issues and a challenger under PGR needs to file her case before nine months has expired.
Inter Partes Review (IPR) permits anyone to challenge an issued patent anytime but limits the grounds of challenging to prior references that show that the invention was known or obvious before the applicant filed her application.
The Transitional Covered Business Method procedure (CBM) was created to handle a temporary problem in a specific subject matter area. When the courts clarified that patents could be issued on inventions relating to business methods in the financial sector several years ago, the USPTO was initially unprepared for the onslaught of applications. There was no comprehensive data base of prior art in this area and most of the examiners were unskilled in the known processes of the financial sector. Challenges under this program can be made under any statutory basis anytime, but the patent must claim a method relating to a financial service that does not include a technological invention. Because this process is meant to correct for a specific problem that was fixed over time, it was legislated to sunset after eight years.
We have learned much from our five years in toiling in the post grant fields. We have seen that instead of serving as an alternative to litigation, the procedures are another tool used to invalidate patents and are a regular adjunct to litigation strategy. Some have complained that the post grant procedures are “killing fields” for patents. And many have urged that the limited ability to amend a claim during the process and the use of the broadest reasonable interpretation as the standard for claim construction by the USPTO necessitate further legislation to correct the problems.
But legislation is not always what is needed.
The history of patent bill development shows that frequently provisions that were intended to be included in patent legislation were remedied in the run up to enactment. Damage issues, venue, pleading requirements and discovery scope have all been carved out of legislation when courts act in a manner to address the issues. Sometimes the fix is not enough, but frequently it ends the need for legislation.
The enumerated problems with the post grant procedures could be bettered by both the courts and the USPTO. The courts have had an opportunity to change the standard for claim construction in the post grant procedures but have declined. But, recently, in Veritas Tech v. Veeam Software Corp, the Federal Circuit criticized the offices knee-jerk denial of a motion to amend in an IPR. And, the same court also just agreed to hear the appeal en banc of In re: Aqua Products Inc. to determine if the tight rules that the USPTO are using that deny too many amendments are consistent with the statute.
The USPTO can ameliorate the problem itself by providing for more liberal leave to amend. The rationale for BRI at the USPTO is that patentee can amend at the Office but not in court. The Office can more easily allow for claims that are further limiting and this would greatly reduce the problem. There may have been some concern about meeting the statutory time periods when the procedures were first implemented as the Office was flooded with IPR petitions and had few board members. But the successful hiring campaign for board judges has reduced that concern and the Office should rectify the problem.
It is usually better, if possible, to remedy problems through iterative changes by courts or the Administration rather than statutorily. Changing a statute is difficult and is usually the result of a negotiated agreement. Usually no side is happy. But if we can work through the system observing the results of the changes we make through case law and rule changes, we can greatly improve the system over time.