Impact of the America Invents Act on patent challenges at USPTO


Eldora Ellison and Deborah Sterling

The AIA was enacted on September 16, 2011, creating new proceedings for challenging patents at the USPTO. Eldora Ellison and Deborah Sterling discuss the predominant post-assurance proceedings that are (or will become) available.

During each proceeding, there is no presumption of validity of the patent, the standard of proof is preponderance of the evidence, and the claims will be given their broadest reasonable construction in light of the specification. Each post-issuance option should be considered when contemplating the enforcement, licensing, valuation or sale of a US patent.

Ex parte examination

Substantively, ex parte reexamination is unchanged by the AIA and so, it is not discussed in detail here. It remains available for any patent if the US Patent and Trademark Office (USPTO) determines that the request for reexamination raises a ‘substantial new question of patentability’. The request can be based only on prior art patents and publications that form the basis for anticipation or obviousness rejections.