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September 28, 2011

Comments

Don,

Thanks for these posts on the various provisions of the AIA. I still need to do my "read it 10 times" review as I suggested on your prior post.

I presume that the end date (September 16, 2012) for inter partes reexam has something to do with the new post-grant opposition proceeding. Any thoughts on whether the number of inter partes reexam between now and then will slow to a trickle (i.e., because of the heightened standard)?

EG:

Good suggestion on the multiple read throughs -- only seven more to go. Because the AIA essentially revises Chapter 31 to replace inter partes reexamination with inter partes review (instead of simply adding a new Chapter), it makes sense that inter partes reexamination disappears as of 9/16/2012 (except, of course, for any reexamination ordered prior to 9/16/2012). It's hard to predict how the new standard will affect requests, given that there are other differences between inter partes reexamination and inter partes review that may impact the decision to file a petition. Thanks for the comment.

Don

Don and EG-

Won't the US grace period instantly expire if an American inventor elects to file anywhere outside of the US? It sounds like they are trying to retire the inter-partes review, and replace it with their *new and improved!* post grant review process. I am not too sure that the latter is the right way to go, but to each their own I suppose.

Best regards,
Stan~

Stan,

A more significant issue about "filing elsewhere" is whether you've got a foreign filing license under 35 USC 184. You get that license usually automatically when you receive the formal filing receipt from the USPTO when you file the U.S. application. If you file outside the U.S. without that license, your U.S. application is dead unless you can get the license "retroactively" which is a very painful process.

Also, after reading the new "statutory bar portion" in Section 3 of the AIA that contains the "grace period," the wording suggests (and others have opined) that you, the inventor, can, in essence have your cake and eat it too. By that, I mean you not only don't blow "novelty" in the U.S. by publishing (although you'll blow "novelty" elsewhere, including Europe), but you may essentially "foul the nest" of others, yet also put a non-patent application "date stake" in the ground as to what you publish that is resistant to subsequent intervening prior art of third parties when you do file the U.S. application (within a year of that "published" date). While that may seem weird, my reading (as well as others) of that portion of Section 3 of the AIA suggests that's what is meant, and could well form a "strategy" for "staking out" what's published that avoids the impact of subsequent intervening prior art of third parties. In fact, this may lead to another interesting version of "leap frong" that occurs in current interference practice, only not "backwards" towards the invention date (as in the current "first to file" regime"), but instead, "backwards" towards the earliest "published" date(s) (yes, there could be multiple "published" dates to worry about).

If you feel queasy now Stan after what I've said, I don't blame you. I've yet to do my first complete reading of the AIA (~150 pages) and it already gives me nightmares. The AIA is worded very confusingly in several spots (some of which others suspect, as do I, were deliberate "language landmines" to be "blown up" later in litigation), and rivals the ambiguous wording in several portions of the Hatch-Waxman act.

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