How did the America Invents Act (AIA) affect ex parte reexamination?
The Leahy-Smith America Invents Act (AIA), enacted on September 16, 2012, made several significant changes to ex parte reexamination:
- Expanded the scope of citable information to include patent owner statements filed in federal court or USPTO proceedings.
- Introduced estoppel provisions related to inter partes review and post-grant review.
- Established a first-inventor-to-file prior art regime, replacing the first-to-invent system.
The MPEP notes:
“The AIA expanded the scope of information that any party may cite in a patent file to include written statements of a patent owner filed in a proceeding before a federal court or the United States Patent and Trademark Office (Office) regarding the scope of any claim of the patent, and provides for how such information may be considered in ex parte reexamination, inter partes review, and post grant review.”
These changes aimed to modernize the patent system and align it with international practices.
To learn more:
Topics:
MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents,
MPEP 2201 - Introduction,
Patent Law,
Patent Procedure