More companies will likely begin closely monitoring their competitors’ patent filings with the aim of opposing them under new procedures established by the America Invents Act, which went into full effect on March 16.
The sweeping patent reform legislation—under which the U.S. switches to a first-to-file from a first-to-invent system—also creates new tools for challenging newly granted patents. And monitoring programs will be key to many companies’ strategies using those tools, says Morrison & Foerster partner Matt Kreeger.
Under post-grant review, for example, a patent granted under the new system can be challenged on a wide variety of grounds in front of the newly established Patent Trial and Appeal Board, which is staffed by administrative patent judges. Previously, oppositions could only be filed on very limited grounds, and rulings were issued by USPTO re-examiners.
A petition for post-grant review, however, has to be filed within nine months of the patent’s issuance. Given that tight time frame, companies with programs in place to quickly identify patents they intend to challenge will have a strategic advantage.
Monitoring competitors’ patent filings has been a more common practice in Europe, which has had AIA-like opposition procedures for many years, says Morrison & Foerster partner Richard Hung. Some companies have their own elaborate in-house monitoring programs, while others rely on patent monitoring services.
Kreeger says that while the new opposition procedures could be powerful competitive tools, they’re not without risk. A poorly drafted post-grant review petition could result in a company’s being barred from later asserting certain claims in federal court, for example.
And it will take some time to assess how well the PTAB forum works, Kreeger says. “This really could change the face of patent litigation,” he notes. “The near future will be spent figuring out exactly what it will all look like.”