Improvement circle of plan, implement, evaluate, improve, business concept

As required by the Leahy-Smith America Invents Act, the PTO issued a report to Congress in September  summarizing implementation of the AIA  in the four years since the Act went into effect. The report  proposes recommended changes to the law that the PTO would like to see enacted. A full copy of the report is available here.

The most substantive issue addressed in these recommendations, in my view, relates to CBM proceedings. Under the originally enacted legislation, the CBM proceeding was intended to be a short-term fix to address financial business method patents that were issued by the patent office under State Street Bank, but that under new controlling § 101 law, were no longer valid. The CBM proceeding will be phased out after nine years. Because the proceeding has been popular with some industries, several of the patent reform bills that have been proposed in recent years seek either to extend the scope of what falls within the definition of a CBM or to extend the time period that CBM would be available. The PTO Report recommends that no change should be made to the expiration of CBM. The PTO reasons that Bilski corrected business method standards, rendering an extension of the CBM provision unnecessary.

Another requested change would allow a party to join new claims to an ongoing trial in which the party is already a participant. The report notes that this change is intended to allow a party to challenge claims that have been newly-asserted in a related district court case but addressing them in the same AIA proceeding as the earlier-asserted, challenged claims. Oftentimes, patent owners initially assert a subset of their patent claims in a civil action only to later amend their complaint to include assertion of infringement of additional claims learned through discovery. The later assertion often results in a second IPR proceeding (if not time barred), which can multiply proceedings on common patents and issues. The PTO believes its proposed changes would make the IPR process more efficient, allowing resolution of more issues in a single proceeding.

With respect to real parties in interest, an issue that has arisen as fertile ground for a patent owner to challenge in an effort to avoid institution of a proceeding, the Report suggests that petitioners should be allowed an opportunity to timely correct the identification of the real party in interest where an error arose without deceptive intent. Because the determination of the real party in interest is extremely fact dependent, the PTO notes that errors sometimes occur.

The remaining recommendations generally deal with consistency between provisions in the AIA and administrative matters such as fee-setting.