Intellectual Property Law Knowledge Center

Mark-Up of 35 U.S.C. Showing Proposed Changes from the Restoring AIA Bill and Initial Commentary, Part I

October 5th, 2021

By Erin M. Dunston and Stephen E. Murray (co-chairs of Panitch Schwarze’s Post-Grant Practice Group)

Attached is a mark-up of the relevant sections of U.S. Code Title 35 showing the changes proposed by the recently-released “Restoring America Invents Act” authored by Senators Patrick Leahy (D-VT) and John Cornyn (R-TX).  When viewing the proposed edits in context, a number of issues and questions become apparent.  As we continue to digest the proposed legislation, below are some of the key points (not necessarily in order of importance):

  1. Requirements for Director review of panel decisions would be established, reflecting consideration of the Supreme Court’s recent Arthrex decision
  2. The Supreme Court’s Return Mail decision is mooted as the Government would now be explicitly given the ability to file a petition for a post-grant proceeding
  3. Eligible grounds are increased jurisdiction would include statutory and [formerly judicially-created] obviousness-type double patenting as well as “admissions in the patent specification, drawings, or claims”
  4. The PTAB’s Fintiv analysis is eliminated – the PTAB would not be able to deny institution based on a concurrent district court ligation
  5. The 1-year time bar would be reset when a complaint is dismissed without prejudice or when new/amended claims from a reexamination are asserted, and would not apply in joinder cases
  6. Factors for a stay of litigation are expressly listed, and interlocutory review of a stay decision would be made available
  7. Estoppel would only apply after appeals have been exhausted, rather than after the PTAB’s final written decision
  8. A patent owner could not obtain claims that are patentably indistinct from any claim deemed unpatentable in a post-grant proceeding
  9. The Director may not terminate in inter partes proceeding in favor of an ex parte proceeding
  10. Parties are to alert the Director if there is a pending application claiming the benefit of a common filing date to the challenged patent
  11. For amendments, the Patent Owner would bear the burden of proof that a substitute claim is patentable, and the PTAB must examine the claim
  12. Deadlines would be established for issuing a post-grant certificate and for rehearing decisions
  13. Standing is provided for to certain petitioners who otherwise would have been unable to appeal adverse decisions to the Federal Circuit
  14. PTAB judges must observe the Code of Conduct for United States Judges

Stay tuned in the coming days for initial thoughts on these points.  Here is a link to the bill:

If you have questions about post-grant proceedings, please contact the authors:  Stephen Murray at, (215-965-1307); Erin Dunston at, (215)-965-1291.



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