Part II of a Guest Post by Brad Pederson
This is the second post addressing transition provisions outlined in the Manager’s Amendment to S. 515. The first post addressed the transition provisions for interferences. This post comments on the transition provisions for inter partes review.
Inter Partes Reexamination to Post Grant/Inter Partes Review – the transition provisions for switching over from the current inter partes reexamination proceedings handled by the Central Reexamination Unit (CRU) to post grant/inter partes reviews handled by the new Patent Trials and Appeals Board (PTAB) contemplates a graduated ramp up with limits on the number of reviews that can be declared under regulations to be promulgated by the Director. Sections 5(c)(2)(C) and 5(f)(2) of the Manager’s Amendment to S. 515 permit the Director to impose “a limit on the number of [reviews] that may be instituted during each of the first 4 years” following the cutover over date to FTFG. While such a graduated transition would certainly be beneficial for the Office and the PTAB to learn how to handle these new review proceedings, the glaring question left open by these transition provisions is what happens to those requests for review that are above the cutoff limit in any given year.
One possible scenario would be that the queue for requesting such reviews would be a first-in-first-out (FIFO) queue where the guarantees of completion of the review within 12/18 months would apply only to the reviews below the cutoff limit which are “instituted” with the remaining requests simply staying in the FIFO queue until such time as one of the current reviews is completed.
PPG Comment: Providing a queue may lead to misuse of the inter partes review process. For example, a plaintiff (especially non-practicing entities) may simply wait to file suit until the queue is filled. Once filed, the defendant will be disadvantaged as S.515 requires filing of post grant/inter partes review by a deadline linked to the defendant’s answer to the complaint. Certainly the defendant could get in the queue but with a year delay, added to the 3 month determination delay, a defendant may be 10-15 months along in the litigation before getting a determination. Such a delay would undermine the ability of inter partes review to serve as an attractive alternative to litigation. Furthermore the delay of the proceeding may impact the ability of defendants secure a stay of the litigation. Likewise, with post grant review available only during a 9 month period, a queue of a year seems inconsistent with the law as one could file a placeholder filing then use it as leverage with little cost.
Another possible scenario would be that the cutoff limit is a hard cap and that requests for inter partes reviews filed after the cutoff limit had been reached are simply returned to be refiled the next year. Needless to say, the nature of the regulations to be promulgated by the Director regarding how the “limits” are to be handled will be an issue that will need careful consideration and attention in the event that Patent Reform Act of 2010 is enacted into law.