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A New Battery of Tools to Fight Patent Pollution

Perspective by David K.S. Cornwell and Richard D. Coller, III

The America Invents Act (AIA) of 2011 is the most sweeping reform of the US patent laws since 1952. The new law seeks in part to harmonize the US with the rest of the world by converting the US from a “first to invent” country to a “first to file” a patent application country. In addition, the AIA adds tools to the repertoire of accused infringers for challenging the validity of issued patents at the US Patent and Trademark Office (PTO).

Green automobile technology has a unique history that affects strategies for both navigating “patent pollution” (i.e. the vast number of invalid patents) and protecting new innovation. Because green automobile technology has its roots in the 19th century, there is prior art relating to clean automobiles going back more than one hundred years.

More recently, it seems that everyone with a garage and a creative thought is attempting to develop the next great thing in clean transportation. In 2011 alone, 724 US patents issued that included the term “electric vehicle.” In the first two months of 2012, more than 150 patents have issued with this same term. The owners of these patents are not just the large automobile companies seeking to expand their markets, but also automobile start-ups, battery companies, universities, individuals, and governments. As expected, these patents span a range of technologies including fuel cells, regenerative braking, batteries, and hybrid technologies.

A clean automobile technology manufacturer must carefully navigate these patents in order to operate freely. Although all patents are examined prior to issuance, a patent examiner might only spend a few days on the entire process of examining and issuing a patent. As a result, many invalid patents exist in the clean automobile space.

Several options currently exist for challenging the validity of issued patents. These options include lawsuits filed in district courts, and “reexamination” proceedings filed at the PTO. The AIA creates two new ways for a third party to challenge the validity of a patent at the PTO.

The first is “inter partes review” (IPR), which will be available beginning on September 16, 2012 for any issued patent. IPR will eventually replace “inter partes reexamination” proceedings. For the PTO to take a fresh look at a patent, the third party must show that there is a reasonable likelihood that one or more of the patent claims are not patentable based on prior art patents or printed publications. IPR is only available nine months after the issuance of a patent, and after the completion of any “post grant review” of the patent filed by another (described below). An IPR proceeding must be completed within one year (or 18 months for cause) and limited discovery by the parties will be allowed. Accused infringers must file an IPR request within one year of being served with a district court complaint. At the end of the PTO process, a dissatisfied patent owner or third party requester may appeal to the Court of Appeals for the Federal Circuit (CAFC).

One of the consequences of filing an IPR request is that the filer is estopped from raising validity challenges in any future lawsuit based on any prior art that the accused infringer used or could have used in the IPR. This estoppel begins at the time of a final written decision of the PTO.

A second validity challenge proceeding created by the new law is “post grant review” (PGR). A PGR request must be filed by a third party requester in a nine month window following the issuance of a patent. The requester must show that there is a reasonable likelihood that one or more of the patent claims are not patentable. Unlike IPR, PGR will be available only for patents with an effective filing date after March 16, 2013. As with IPR, limited discovery will be available, the PTO will render a final decision within one year (or eighteen months for cause), and decisions can be appealed to the CAFC.

The most powerful characteristic of PGR, and one that distinguishes it from IPR, is that issues can be raised beyond invalidity based on prior art patents or printed publications. For example, a third party may use PGR to show that the patent claim is indefinite, or that prior “public use” activities invalidate the patent. As with IPR, the PGR requestor will be bound by the decision of the PTO and cannot later raise the broader suite of issues of validity that it raised or could have raised in the PGR proceeding.

Both of the mechanisms outlined above allow the PTO to review the validity of an issued patent without the “presumption of validity.” In court, a patent is presumed valid—at the PTO the patent does not enjoy such a presumption. In addition, in the case of both IPR and PGR, patent terms are given their “broadest reasonable” construction. This is not true in court. In court, the patent terms are construed more narrowly in light of the specification and the patent procurement file history.

The AIA also provides important changes for those seeking patents including a lightning fast track for obtaining protection (“Track One”) upon payment of increase fees. When used as part of a comprehensive patent portfolio procurement strategy, Track One filing can be utilized to obtain patent protection more quickly at a relatively modest cost.

For innovators, it is vital to understand the prior art and to protect research and development investment resources by obtaining appropriate patents. The AIA transitions the US from a country granting a patent to the first party to “invent” to granting the patent to the first party to file a patent application. Although the transition begins on March 16, 2013, it is important for companies to immediately manage the transition.

The AIA is therefore important to both innovators who must now consider the ramifications of the “first to file” paradigm and for those navigating the “patent pollution” who soon will have additional tools for defending themselves against invalid patents.

David K.S. Cornwell ([email protected]) is a director and Richard D. Coller, III ([email protected]) is an associate at Washington, DC-based intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C. ( The views expressed herein are the authors’ alone and should not be attributed to the firm or its clients.


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