The following is a summary of an interview I conducted with Monica Winghart, Article One’s Executive Vice President and General Counsel, about the impact of the new America Invents Act (“AIA”) provisions that went into effect on September 16. Ms. Winghart has more than 15 years of intellectual property experience. Prior to joining Article One, she was Senior Corporate Counsel for The Clorox Company, where she was Director of IP litigation, responsible for patent clearance and portfolio management, lead counsel for the three of the company’s largest business units, and a part of Clorox’s M&A, licensing and transactions teams.
Here are the highlights:
Inter Partes Review (“IPR”)
- The new IPR and post-grant review procedures are “game changing.” They collectively create more “touch points for the PTO & the public to assess the invention over the state of the art than ever before in US patent history.”
- The cost of applying for IPR is significant, but relative to litigation, the fees are not extreme. There will be some sticker shock for companies, and IPR for entire patent families may be cost-prohibitive. But IPR should be a valid litigation alternative in many cases.
- Additionally, the increased scope of prior art that will be considered in IPRs is a positive step.
- The certainty of timing is also an important improvement in the IPR system. Having a reexamination decision within a year in most cases will be a significant draw for companies.
- Overall, the key positive of the IPR rules is the ability to “bring your case” and have the “experts at the patent office . . . really consider your invalidity arguments on the merits” to determine whether or not it is novel.
- Winghart is “almost always pleased with the examiners assigned” to cases she has been involved in. The examiners are “tested and vetted” and develop expertise in the area.
- Winghart acknowledges that we will need the first patents that undergo IPR to be “guinea pigs” to see what level of quality comes out of IPR, but is “excited about the possibility of what could be.”
- The increased IPR standard — “reasonable likelihood to prevail on at least one claim” instead of “substantial question of patent validity” — has the potential to “open the door” to more challenges.
Post-Grant Review (“PGR”)
- The PGR’s nine-month window to file after a patent issues and the consolidation of multiple PGR’s is significant. Winghart “wish[es] we could do it in IPRs.”
- The nine-month window “makes people make a decision and harmonizes to European opposition proceedings.”
- The PGR’s required speed – the PTO must respond within 3 months of the patentee’s statement – is a significant benefit: “Within one year you will understand the challenge to your patent.”
- Winghart has some concerns about the ability to settle and stop either a PGR or an IPR: “there is a little bit of a tension between the settlement piece and the ultimate goal of determining patent quality.” That is interesting in that the flexibility to settle a case after filing a PGR or an IPR is a key enticement to many companies.