Understanding New Patent Litigation Alternatives

14 August, 2015


The Leahy-Smith American Invents Act (AIA) is a United States federal statute that was passed by Congress and signed into law by President Barack Obama on September 16, 2011 establishing new trial proceedings to be conducted by the Patent Trial and Appeal Board (PTAB) in the United States Patent Office.

The law represents the most significant change to the U.S. patent system since 1952. Its central provisions went into effect on September 16, 2012 and on March 16, 2013.

Named for its lead sponsors, Senator Patrick Leahy (D-VT) and Representative Lamar Smith (R-TX), the Act switches the U.S. patent system from a system based on invention date to a system based on patent filing date.

The AIA refers to this new regime as “First-Inventor-to-File (FITF) and operates differently from the “First-to-Invent” (FTI) regime that was previously in effect in the U.S. and in many places around the world. Most notably the new regime eliminates proceedings at the U.S. Patent Office for resolving priority contests among near-simultaneous inventors who both file applications for the same invention (interference proceedings) because priority under the new Act is now based on filing date.

The Act also:

  • Expands post-grant opposition proceedings
  • Retains existing ex parte reexamination
  • Adds preissuance submissions by third parties
  • Expands inter partes reexamination, which was renamed inter partes review (IPR)
  • Adds post-grant review (PGR)

Because of the law’s relative infancy, awareness and understanding of the new alternatives to patent litigation are still quite limited. Our recent white paper, “Making Sense of Patent Litigation Alternatives” explains the new proceedingsfocusing primarily on Inter Partes Review (IPR) and Post Grant Review (PGR)and compares them to District Court litigation. The paper also discusses the IPR and PGR timelines, opening motions, and the implications of the new statute on discovery.

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