During last week’s hearing before the House Judiciary Committee on the implementation status of the America Invents Act (AIA), most of the invited speakers offered particular comments/suggestions on the USPTO’s implementation efforts. Many of these comments were simply re-presentations of written comments submitted this past Spring.
Others focused on possible technical amendments to the AIA. Interestingly, former Committee Chairman James Sensenbrenner (an opponent of the original legislation) accused Committee members of devising such amendments in secret. However, this accusation was quickly dismissed by other members of the Committee who took the position that no such technical amendment exists…..yet anyway. Of course, possible technical fixes have been rumored for quite some time. (webcast here)
When it comes to post grant proceedings, there are quite a few “fixes” that are needed if the legislation is to achieve the goals of the legislature.
In terms of purely technical fixes, some are relatively straight forward. For example, the ex parte patent (EXP) reexamination statute (35 U.S.C. § 302) states that “any person at any time may request reexamination.” However, as the estoppel provision of Inter Partes Review (IPR) applies to all Office proceedings, a losing challenger of an IPR would be estopped from filing a later EXP. Thus, there would appear to be some inconsistency between the relevant statutes absent a technical amendment to one or the other.
Other fixes relating to IPR estoppel are also necessary to prevent a losing challenger in an inter partes patent reexamination from simply re-filing an IPR upon an adverse decision.
A further technical problem exists with respect to the 9-month window mistakenly applied to first to invent patents, also known as the “dead zone.”
However, perhaps the most important fix to the PGR statutes would not seem to be very “technical” at all. That is, the expansive estoppel provision of Post Grant Review (PGR) renders the entire proceeding largely worthless to the public.
PGR estoppel applies to” issues that were raised or reasonably could have been raised.” While this language is identical to the estoppel provision of IPX, the scope of patentability challenges that may be brought in a PGR proceeding are not limited to patents and printed publications as in IPX. As a result, a challenger that fails to prove unpatentability in a PGR proceeding will be left with, practically speaking, no invalidity defenses as a result of estoppel should the dispute move on to the courts. (save inequitable conduct, and perhaps defenses that would have been unreasonable to raise earlier… whatever that means)
Based on my discussions with many large stakeholders, this all encompassing estoppel is oft cited as the primary reason that PGR is not going to be given serious consideration as an option for patent challengers. For this reason, many are advocating the need to alter the breadth of PGR estoppel to preclude only those issues actually raised during PGR (akin to the TPCBMP estoppel provision). Some have even argued that this fix would be technical in nature. (See page 24 of Eli Lilly statement explaining PGR estoppel drafting error here)
It is expected that Congress will work toward fixing some of the above noted issues via a technical amendment. Stay tuned.