IP Law Bulletin

Yesterday, January 14, 2013, President Obama signed into law a technical amendment bill aimed at making mostly technical corrections to the AIA. The bill was passed by both houses of the 112th Congress just before completing their terms. The provisions of the law likely to have the most significant impact on practitioners relate to the timing for filing an inventor's oath or declaration and the elimination of a nine month "dead zone" period for filing inter partes reviews for certain patent applications. The law allows an inventor's oath or declaration to be filed through the date the application's issue fee is paid. The law also allows inter partes reviews to be filed against a patent immediately after the patent issues if the corresponding application only claims subject matter filed with the United States Patent and Trademark Office before March 16, 2013, i.e., the patent is ineligible to be challenged using the newly created post-grant review. A similar "dead zone" was also eliminated for certain reissue patents. Two more controversial issues initially raised in the technical amendment bill pertaining to the treatment of "pre-GATT" patent applications that have been pending since 1995 and estoppel for post-grant review challenges extending to "any ground that the petitioner raised or reasonably could have raised during that post-grant review," (emphasis added) were eliminated from the bill before it was passed and signed into law, but may be addressed by the 113th Congress.