Historically, when patent applicants received office actions rejecting their patent applications, one of the most common failed requirements cited by the patent examiner is related to Section 112: Specification. Many otherwise sound patent applications have run afoul of this seemingly straightforward section of patent law, which requires the applicant to spell out a precise description of the claimed invention, its components and its intended operation.
Before the Leahy-Smith America Invents Act (AIA) overhauled the patent process, Section 112 concerns could be comfortably addressed via arguments for withdrawal or amendment. However, the AIA has increased the scope and intensity of patent application scrutiny. In the current environment, a patent application’s best chance of success is to arrive at the U.S. Patent and Trademark Office in a form that is essentially ready for allowance.
Since March 2013, even applications that result in a successful grant from a USPTO patent examiner are vulnerable to the new Post Grant Review process for nine months from the patent’s issue date. During that window, an eligible third-party petitioner can, for a fee, challenge the validity of the grant employing multiple criteria, including Section 112 grounds. If the Patent Trial and Appeal Board (PTAB) determines that the petition for Post Grant Review meets the “more likely than not” standard, the patent’s claims will be reviewed by the tribunal.
The potential for Post Grant Review means that it is extremely important now to submit ironclad applications, according to patent attorney Brian Elias, who is Director of IP Product Planning for LexisNexis IP Solutions.
“There’s no reason why any attorney should file an application that results in a Section 112 rejection,” said Elias.
According to Elias, an inadequately prepared patent application may get lucky enough to survive scrutiny by a single patent examiner at the USPTO, but it is far less likely to survive the combined scrutiny of interested third parties – who often are competitors – and that of the Patent Trial and Appeal Board.
The danger for newly minted patents is further accentuated by the “preponderance of the evidence” standard employed by the PTAB during Post Grant Review, which is a lower bar than the “clear and convincing” evidentiary standard employed by federal district courts during patent trials.
In the wake of the AIA, an application’s initial quality is critical to ensure it will ultimately be successful, Elias stated.
“The game has changed enough that prosecuting a patent successfully today requires a high-quality application from the outset. Good ‘lawyering’ can no longer overcome an application’s defects, and if an allowed patent goes into PGR, teams of people will try to make it fail,” Elias said. “If you don’t get it right early, you could find that you’ve invested thousands of dollars and your time in an asset that’s essentially worthless.”