Effective Dates for Third-Party Practice Under the AIA
Inter Partes Review
Under Section 6, Chapter 31 of the America Invents Act ("AIA"), a person who is not the owner of a patent may file a petition
to institute an inter partes review ("IPR") of the patent. The effective date for IPR availability is September 16, 2012 - the date
of expiration of the one-year period beginning on the date of enactment. IPR will apply to any patent issued before, on, or
after the effective date. There is, however, a transitional period that takes effect on the date of enactment and applies to old
IP Reexams filed on or after the date of the enactment, but before the effective date. During the transition period, the new
standard for accepting IPR applies. Thus, whereas before the standard was whether a "substantial new question of
patentability" exists, the standard as of the date of enactment is whether there is a "reasonable likelihood that the petitioner
would prevail with respect to at least one claim."
Post Grant Review
Under Section 6, Chapter 32 of the AIA, a person who is not the owner of a patent may file a petition to institute a post-grant review
("PGR") of the patent. The new PGR process will apply to patents subject to the first to file rules, which are patents issuing on an
application that contains or contained at any time a claim that has an effective filing date (EFD) that is on or after the date 18 months
from the date of enactment - March 16, 2013). (Or any patent that has a specific reference under sections 120, 121, 355(c) to a patent
or application that contains or contained at any time such a claim.) The standard for grant of a petition under the new PGR is: 1) more
likely than not that at least 1 of the challenged claims is unpatentable; or 2) the petition raises a novel or unsettled legal question
important to other patents or applications.
With respect to interference proceedings pending before the effective date, the AIA authorizes the director to determine the
procedures under which such an interference is to proceed. This includes a determination as to whether all such intereferences
will be dismissed without prejudice in favor of a petition for PGR or, alternatively, such pre-existing interferences will proceed as
if the AIA had no effect.
Third-Party Submission
Under Section 8 f the AIA, a third party may submit for submission and inclusion in the record of a patent application, any
patent , published patent application, or other printed publication of potential relevance to the examination of the application.
The submission must be made in writing before the earlier of: 1) the date of a notice of allowance; or 2) the later of, six months
after the date on which the application is first published or the date of the first rejection of any claim by the examiner. A third party
may make a submission on any pending application on or after the effective date, September 16, 2012.
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