AIA Third Party Submissions

The America Invents Act (AIA) provides new opportunities for third parties to submit prior art for recently published applications or granted patents. A few of the AIA provisions include covered business method review, inter-partes review and post grant review.

Covered Business Method (CBM)

Covered Business Method is a review process implemented by the America Invents Act (AIA) to review the patentability of one or more claims in a CBM patent. The CBM review process started in Sep 16, 2012 and will end in Sep 16, 2020. As stated in USPTO, a CBM patent claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service, other than technological inventions.

Only persons who have been sued for infringement may petition the PTO to commence a CBM proceeding. The review process is held before the Patent Trial and Appeal Board (PTAB) primarily constituted of Appeals Division and Trial Division. The review usually concludes within a year, but could be extended up to six months longer. Until then, the litigation will be put on hold. At the end of the proceeding, PTO will issue a final written decision addressing the patentability of the challenged claims. Parties can

  • Request a rehearing of PTO’s decision
  • Settle the dispute and PTO may terminate or issue a final written decision
  • If dissatisfied with the PTO’s decision, parties can appeal to Court of Appeals of the Federal Circuit (CAFC)

Inter-Partes Review (IPR)

IPR is another tool that AIA introduced to enable a third party to challenge the validity of an issued patent based on prior art patents or publications. IPR became available for all patents on Sep 16, 2012 and can be initiated later of nine months after the grant of a patent or the date of the termination of the Post-Grant Review (PGR) of a patent. The petition must identify each claim challenged, the grounds on which the challenge to each claim is based and the evidence that supports the grounds for the challenge to each claim. After initiation of an IPR, conclusion (written decision) will be provided within 12 months, which may be extended for another 6 months. As with CBM, IPR proceedings are administrated by the Patent Trial and Appeal Board (PTAB) and heard by a panel of judges, issuing a final decision on patentability. Parties can

  • Request a rehearing of PTO’s decision
  • Settle the dispute and PTO may terminate or issue a final written decision
  • If dissatisfied with the PTO’s decision, parties can appeal to Court of Appeals of the Federal Circuit (CAFC)

The request fee is $9,000 plus a fee of $200.00 for each claim over 20, and the post-institution fee is $14,000 plus a fee of $400.00 for each claim over 15.

Post Grant Review (PGR)

The AIA provides another administrative opposition proceeding, called the Post-Grant Review, allowing a third party to challenge a patent on any ground related to invalidity where a petition can be filed during the first nine months after the grant or reissue of the patent. PGR became effective on Sep 16, 2012 and is only available for patents that have an effective filing date after March 16, 2013. PGR review is also conducted in a streamlined process intended to reach conclusion within 12 months (extendable by an additional 6 months), allowing for a quicker resolution compared to Courts. Parties can

  • Request a rehearing of PTO’s decision
  • Settle the dispute and PTO may terminate or issue a final written decision
  • If dissatisfied with the PTO’s decision, parties can appeal to Court of Appeals of the Federal Circuit (CAFC)

The request fee is $12,000 plus a fee of $250.00 for each claim over 20, and the post-institution fee is $18,000 plus a fee of $550.00 for each claim over 15.

Our Services include:

1) AIA Services with PAIR Alert

PAIR Alert lets you know if a given patent application is eligible for third party submission or not, which can help you plan your IP strategy.PAIR Alert tool automatically checks the eligibility for AIA submission of all the applications of interest and displays a flag of appropriate color indicating the nature of eligibility. Clicking the flag will open an Excel showing the bibliographic details of the patent application along with the eligible ‘To’ date (if post-grant) and the reason for eligibility (if pre-issuance). The flag will be displayed until the eligibility period expires.

Benefits of the service:

  • Effortless tracking of applications for AIA submission
  • On time filing of pre-issuance/post-grant submissions
  • Reducing business risk of missing critical deadlines
 

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2) Monitoring Services on Interference/Post Grant and Inter-Partes Review

When two or more parties claim to have invented the same subject matter more or less, the dispute over who have invented first are resolved by PTAB at the PTO with similar outcomes as Court decisions. MaxVal offers email alert services to help you stay updated on the interference, post grant and inter-partes review case activities that are of your interest. The data is sourced from USPTO website on a daily basis. The key feature of this service is access to the latest prosecution status of the case review, comprehensive report of the activities held along with direct access to the PDFs..

  • Receive user-friendly emails/alerts that save time and effort
  • Receive alerts at a frequency you designate (daily, weekly, monthly)
  • Receive alerts on prosecution status and events as they occur
  • Dedicated team for fast response
 

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3) Prior Art Search and Drafting Description

MaxVal’s prior-art search covers patent and non-patent databases. Our reports are customizable in detail and can include one or more of the following: the complete search record (strategy and hits), a table with relevant portions of the short listed references highlighted for attorney review, a chart showing the extent to which features of the current invention are disclosed (undisclosed/partially disclosed/fully disclosed) in the shortlisted prior-art references and the short list of references ranked in order of relevance. A concise description of the relevance of each item is listed.

Benefits of the service:

  • Perform in-depth search
  • Standardized procedures for preparing reports, which are unique and detailed
  • Well experienced in domain knowledge as well academia
  • On-time delivery

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4) Pre-Issuance Submission

Pre-issuance submission (submitters can remain anonymous) must be made before the earlier of 1) NOA mailed to applicant or 2) the later of either six months from the date of publication of the application or the first Rejection is mailed to the applicant. This method is intended for third parties to submit prior art relevant to the examination of a patent application, and will include a list of items being submitted, a concise description of the asserted relevance of each item in the list, a legible copy of the items identified in the document list (other than US Patents and applications) and an English translation of any non-English item.

Benefits of the service:

  • Perform in-depth search, which is accurate and cost saving
  • On-time submission