The U.S. Patent and Trademark Office (USPTO) recently issued a Final Rule to eliminate a “dead zone” inadvertently created by the America Invents Act. Petitioners can now file inter partes review petitions challenging first-to-invent patents and reissue patents upon issuance.
Under the original rules, inter partes reviews were available only for patents that had been issued for at least nine months. In addition, post-grant reviews were only available for patents examined under the first-to-file system. These provisions created two nine-month “dead zones,” in which first-to-invent patents and reissued patents could not be challenged in an inter partes proceeding during the first nine months after issuance.
Under the Final Rule, a petitioner may now file an inter partes review petition challenging a first-to-invent patent or reissue patent upon issuance. Accordingly, 37 CFR § 42.102(a) now states:
(a) A petition for inter partes review of a patent must be filed after the later of the following dates, where applicable:
- If the patent is a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act, the date that is nine months after the date of the grant of the patent;
- If the patent is a patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant of the patent; or
- If a post-grant review is instituted as set forth in subpart C of this part, the date of the termination of such post-grant review.
The correction became effective March 25, 2013.
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