POST-ISSUANCE REVIEW CHANGES TO REFORM LEGISLATION

Darrin Auito | March 7, 2010

The Senate sponsors of the proposed Patent Reform Act of 2010 have changed the reexamination provisions to create more coherent structure for post-issuance review of U.S. patents.  Essentially, the changes (found here) protect patentees from harassing reexamination requests and give the PTO greater discretion handling such requests.

The likelihood of passage of the legislation is always in doubt, as shown by Congress’ failures in past years to enact similar reforms.

(1)        Post-Grant Review

A third party may file with the PTO a petition for post-grant review – the new ex parte reexamination – within nine months of the issue date of the patent.  The petition may assert any defense available under 35 U.S.C. § 282, specifically any of the conditions of patentability under §§ 101, 102, 103 & 112. This is a substantial expansion of the possible grounds for a third party to attack a patent.  It could be of special interest to those challenging patents on the basis of the Bilski decision due from the Supreme Court later this year.

The petition for post-grant review will be granted by the PTO where the information asserted, if unrebutted, demonstrates that it is “more likely than not” that at least one claim of the patent is invalid.  This new standard is similar to a prima facie case of invalidity and is higher than the current requirement of a substantial new question (SNQ) of patentability.

A third party is estopped from requesting or maintaining a proceeding before the PTO with respect to a claim on any ground that the third party “raised or reasonably could have raised” during the Post-Grant Review on the claim that resulted in a final written decision.  This is a more subjective standard than the provision in the earlier version of the reform legislation (only “raised”).

A third party is also estopped from asserting certain defenses in subsequent litigation, but only those defenses that it “raised” in the Post-Grant Review.

(2)        Inter Partes Review

A third party may file with the PTO a petition for an inter partes review – the new inter partes reexamination – nines months after issuance of the patent or after termination of a post-grant review.  A petition, however, may not be filed more than three months after the due date on which the third party (petitioner) is required to respond to an infringement action; and a petition may not be filed by a petitioner that has also filed a law suit for declaratory judgment that the patent is invalid.

As with current inter partes reexamination requests, the petition for inter partes review may be based on only patents or printed publications.

The petition must establish a “reasonable likelihood” that at least one claim of the patent is invalid.  This standard for granting an inter partes review is similar to the standard applied by District Courts for determining whether to issue preliminary injunctions.

A third party is estopped from asserting certain defenses in subsequent litigation, but only those defenses that it “raised or reasonably could have raised” in the inter partes review.  This is a compromise between the current estoppel provision (“raised or could have raised”) and the provision in the earlier version of the reform legislation (“raised”).

The compromise language also applies to proceedings before the PTO.  A third party is estopped from requesting or maintaining a proceeding before the PTO with respect to a claim on any ground that the third party “raised or reasonably could have raised” during the inter partes review of the claim that resulted in a final written decision.

(3)        Supplemental Review

A patentee may file requests for “supplemental examination,” similar to the current ex parte reexamination sought by a patentee.  A patentee could use such a request to disclose a patent or printed publication or other information and thereby preclude an accused infringer from asserting in a later infringement action, a defense of inequitable conduct based on that prior art or other information.

(4)        Other Provisions

There are also provisions allowing the PTO (post-grant review and inter partes review) to permit limited discovery and to sanction parties that abuse the proceedings, for instance, parties that file petitions to harass the patentee.

Patentees (post-grant review and inter partes review) would still be allowed to amend their claims, but only once as of right – later claim amendments would require consent of the third party petitioner or a showing of good cause.

Settlement would be possible for both inter partes review and post-grant review, but only before a decision by the PTO on the merits – presumably the final decision of validity or invalidity.

The PTO would broad authority to create rules governing the conduct of the proceedings, but would be required to complete those proceedings within one year, with possible extensions in special cases of up to six months.

Most of the new provisions would apply to proceedings begun more than one year after enactment of the legislation.  The “reasonable likelihood” for the PTO to grant inter partes review, however, would apply to requests after enactment, i.e., it would be apply during the one year transition period to the new law.

Scott Daniels and Darrin Auito

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