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January 2012 CBA REPORT
cover article
a derivation proceeding is instituted.
That decision is final, and not appeal-
able. Assuming the director institutes a
derivation proceeding, the Patent Trial
and Appeal Board conducts the proceed-
ing. During the proceeding, the parties
may settle (for example, to reflect an
agreement as to the correct inventors) or
arbitrate their dispute.
If the Patent Trial and Appeal Board
issues a final decision, that decision is
appealable to the United States Court of
Appeals for the Federal Circuit. In the
alternative, the losing party may elect
to file a civil action in federal district
court, assuming a notice is filed with the
Post-Grant Patent Challenges
The impact that the America In-
vents Act will have on the U.S. patent
system, as it relates to challenges to
patents after they are granted, has yet to
be determined. That is because the new
Post-Grant Review proceeding (PGR)
only applies to patents issued from
applications having an effective filing
date of March 16, 2013, and thereafter.
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Mike Kaufman, Todd Bailey, Sherry Davis,
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However, the potential impact is signifi-
cant – PGR allows patent challengers to
attack patents by requesting the PTO to
cancel one or more claims as unpatent-
able. The bases for such a request include
an allegation that the subject matter is
not patentable, for example, that it is an-
ticipated or obvious. Attacks can also be
made on the basis of a defective specifica-
tion or an improper reissue patent.
Any client who has been sued for pat-
ent infringement knows all too well the
“clear and convincing” evidence standard
required to prove the patent asserted
against them is invalid. The threshold for
instituting PGR is, however, significantly
different. PGR may be instituted by dem-
onstrating that it is more likely than not
that one or more claims of the patent are
invalid, or that a “novel or unsettled legal
question” is raised by the request.
Because the America Invents Act
redefines what is “prior art” that can
render one or more of the claims of a pat-
ent invalid, clients considering PGR must
be informed regarding what can serve
as invalidating prior art. That prior art
includes art that was patented, described
in a printed publication, or in public use,
on sale, or otherwise made available to
the public (by someone other than the
inventor) before the effective filing date
of the application that ultimately issued
as the subject patent. In addition, if the
claimed invention was described in a pat-
ent or published application that names
another inventor, and was effectively filed
before the effective filing date of the sub-
ject patent, that also constitutes prior art.
However, it is important to note that the
America Invents Act retains the current
law’s one-year grace period for disclo-
sures by the inventor. Thus, a disclosure
made one year or less before the effective
filing date of the claimed invention is not
prior art, if that disclosure was made by
an inventor or by another who obtained
subject matter directly or indirectly from
the inventor.
Also significant is that PGR contem-
plates discovery. The director of the PTO
is tasked with establishing standards
and procedures for the discovery of
relevant evidence, prescribing sanctions
for abuse of discovery, the process, or
other improper use of PGR proceedings,
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