USPTO Issues New Rules on AIA Reviews

USPTO Issues New Rules on AIA Reviews

By John T. M. DiMaio, Ph.D.

In August 2015, the USPTO proposed several new rules for AIA review petitions (post-grant and inter partes reviews). On March 31, 2016, these proposed rules became actual rules and are set to take effect on May 1, 2016.

These new rules revise several sections of 37 CFR, which the title that promulgates the Federal regulation on patents, trademarks, and copyrights. Specifically, these new rules expand the preliminary responses that patent owners were allowed to issue against a petitioner. These new responses allow patent owners to introduce new evidence to rebut a petitioner’s case. Theoretically, the expansion of preliminary responses is expected to lower the number of AIA proceedings.

Shortly after the introduction of the IPR system with the AIA, parties, such as the Coalition for Affordable Drugs, have been using the IPR system to try to invalidate pharmaceutical patents. Although the Coalition claims its actions are to reduce price costs, the Coalition is also placing short bids on the companies it is filing IPR’s against. Thus, if the Coalition manages to invalidate that party’s patent, the Coalition will receive in a windfall.

Many groups, including the pharmaceutical companies whom are affected by these actions, believe the Coalition is abusing the IPR proceeding for its own financial gain, filing unwarranted petitions. For more information about AIA proceedings, please read our latest issue of the Buffalo Intellectual Property Law Journal, which had several articles focusing on the new AIA proceedings.