On August 14, 2012, the U.S. Patent & Trademark Office (“PTO”) issued its final rules for implementation of the new “inter partes review” (“IPR”) proceeding set forth in the America Invents Act of 2011 (“AIA”). The statutory provisions authorizing IPR proceedings go into effect September 16, 2012. IPR will thereafter replace inter partes reexamination and will be available for any patent issued at any time, provided that the patent has been issued for at least nine months, is not subject to a pending post-grant review and is not the subject of a patent infringement complaint filed more than one year before the IPR. An IPR proceeding enables parties to challenge the validity of issued patents based on prior art patents and printed publications before a panel of administrative law judges.
While many uncertainties remain with respect to how the IPR proceeding will progress in view of these final rules, we are satisfied that the PTO seemed receptive to considering changes in response to the hundreds of comments received, and we believe that the final rules resolve several uncertainties resulting from the proposed rules and provide additional guidance relating to others that will help ensure a smoother transition to the use of the new IPR proceeding.
For more information about the IPR proceedings and other changes resulting from the AIA, contact a member of our Patent Reexamination and Inter Partes Disputes team.
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