The Leahy-Smith America Invents Act of 2011 (AIA) created
several new post-grant proceedings to facilitate challenges
to the validity of US patents outside of litigation in district
courts. Those new proceedings are increasingly becoming
viable alternatives to litigation in US federal court, because
they are more efficient than district court declaratory
judgment litigation. For example, as of January 31, 2017,
a total of 6,380 AIA post-grant petitions have been filed,
and statistics released by the US Patent and Trademark Office
(USPTO) indicate that, if current trends continue, more than
2,000 petitions could be filed in 2017 alone. In comparison,
However, these new proceedings are still in flux. For example,
recent US federal circuit and district court decisions have
redefined the scope of statutory estoppel under 35 U.S.C.
§ 315(e), and narrowed the scope of patents that qualify for
Covered Business Method Review under the AIA.
Intellectual Property: Efficiencies
in Patent Post-Grant Proceedings
By Ann Fort, Pete Pappas, Karissa Blyth, Robert Kohse and Steffan Finnegan
