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Unwary Litigants to Lose USPTO Review Option Under Patent Reform

Posted On: Aug. 29, 2011   By: Scott A. McKeown
patent reform timingPatent Reform & Inter Partes Review

Last week, I discussed some important changes to inter partes patent reexamination that will become effective immediately upon enactment of the patent reform legislation. Namely, that the standard for initiating inter partes reexamination will become stricter. The new standard is defined as: a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. This new standard replaces the current standard that requires a Substantial New Question of Patentability (SNQ), perhaps within a matter of days.

Inter Partes Review will ultimately replace inter partes patent reexamination on the one year anniversary of the enactment of the patent reform legislation. Thus, the interim standard for the last year of inter partes patent reexamination will help the USPTO prepare to transition to the new Inter Partes Review proceeding, which will use the same standard.

Looking forward to Inter Partes Review, current litigation defendants will find themselves shut out from the USPTO with respect to a parallel inter partes proceeding unless they pursue matters before the one year anniversary.

Inter Partes Review as currently written in the pending legislation, includes 35 U.S.C. § 315. Section 315(b) is entitled Patent Owner’s Action, and provides as follows:

An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.
(emphasis added)

In other words, defendants can no longer wait until an advanced stage of a litigation proceeding before deciding to pursue Inter Partes Review.

For those already subject to litigation, the clock would appear to begin ticking upon enactment. So, litigation currently in early stages, awaiting a settlement, or just months away from costly discovery, may lose out on the ability to institute an inter partes proceeding if not mindful of the anniversary. Indeed, currently active litigants will not be able to wait for Inter Partes Review as once this proceeding becomes available in roughly 12 months, their litigation will be outside the 1 year date provision. Instead, those litigants desiring a parallel inter partes proceeding will be forced to file an inter partes reexamination now, before the anniversary date of patent reform enactment.

As pointed out previously, the date of patent reform enactment and the one year anniversary will likely result in a bubble of inter partes patent reexamination filings.

Of course, the estoppel provisions of inter partes patent reexamination currently in place effectively limit the ability to conclude an inter partes patent reexamination before the conclusion of an advanced litigation. Still, often times such filings are pursued by defendants for additional claim construction clarification, or stay purposes. While ex parte patent reexamination remains an option after Patent Reform, the loss of a voice in USPTO proceedings is a significant pitfall for those not following the seemingly imminent enactment of the Patent Reform legislation.

2 Responses to “Unwary Litigants to Lose USPTO Review Option Under Patent Reform”

  1. Scott:

    Section 6(c)(2)(A) of the bill triggers the effective date of the new Section 315(b) at the one year anniversary. So, everyone, including currently pending litigants, will have the entire year after enactment to decide whether to file an inter partes reexam. In addition, because of the capped limits on the number of inter partes reviews granted during the first 4 years after the effective date (5 years after enactment), it is possible that applicants for inter partes review who don’t make the cut may be given the option of proceeding with an inter partes reexamination. We will have to wait to see what happens as the regulations about inter partes review are promulgated by the Office.

  2. Brad,

    Yes, the one year prohibition goes into effect on the anniversary. I was just pointing out that current litigants may find themselves shut out if they do not seek inter partes reexamination prior to the anniversary, so we are in agreement there.

    I don’t expect the capped limits to kick in, folks will be timid in the early going, and the heightened standard may filter out requests, or scare some challengers off. I would be very surprised in inter partes reexamination were resurrected as an option. We’ll see.