PubPat: Proposed Post-Grant Review Cuts-Out Public Interest

There is a possibility that a passed Patent Reform statute would eliminate third-party-requested reexaminations (ex parte and inter partes) and yet fail to create any substantive third-party initiated post-grant procedure to replace the current options.

In addition, the proposed post-grant review procedure would block a non-threatened party from challenging the validity of a patent more than a year after its issuance. In a letter sent today to the Senate reformers, Dan Ravicher of PubPat asks that third-party reexamination be preserved.  The non-profit groups such as PubPat and EFF have filed dozens of reexamination requests asking the PTO to invalidate “wrongfully issued” patents.

• PubPat Letter

The Current Proposal Found in S.1145: The proposed system of post-grant review would have two windows for third-party filings:

• First Window: Post-Grant oppositions filed by anyone within one year of issuance.  Patents reviewed in the first window would not be given any presumption of validity.
• Second Window: Opposition must be filed by party who has a likelihood of feeling “significant economic harm” based on the patent. A presumption of validity would apply in reviews within the second window.

The PTO would be required to complete its review work within 18 months. Post grant reviews would be conducted by a three-member panel of administrative judges rather than by examiners. Parties to the review may settle the case.

• PubPat Recent Successes:
  • Forgent Networks '672 "JPEG" patent: Broadest claims finally rejected;
    Patentee abandoned assertion of patent.
  • Columbia '275 Axel Cotransformation Patent: All claims finally
    rejected; Patentee abandoned assertion of patent.
  • Microsoft '517 FAT Patent: Patentee modifies claims, which are allowed.
  • Pfizer '156 Lipitor Patent: Patentee modifies claims, which are allowed.
  • WARF Stem Cell patents and Gilead Tenofovir (AIDS drug) patents have had all claims non-finally rejected, but are still pending. 

Comments

[real anonymous]

"PubPat Recent Successes:...Microsoft '517 FAT Patent: Patentee modifies claims, which are allowed."

So, the FAT patent had some 112s, PubPat requests reexamination, the patentee gets to correct the 112s and the patent comes through complete, unscathed, tested by fire, and it's called a success...

http://patimg1.uspto.gov/.piw?docid=US005579517&PageNum=20&IDKey=C6CCCEF1D41A&HomeUrl=http://patft1.uspto.gov/netacgi/nph-Parser?Sect1=PTO1%2526Sect2=HITOFF%2526d=PALL%2526p=1%2526u=%25252Fnetahtml%25252FPTO%25252Fsrchnum.htm%2526r=1%2526f=G%2526l=50%2526s1=5579517.PN.%2526OS=PN/5579517%2526RS=PN/5579517

I'd like to think it was just a mistake, but I remember PubPat also calling the Pfizer reexamination a "substantial victory" when (as to FDA approved Lipitor formulations) it was apparently exactly the opposite.

http://patentbaristas.com/archives/2005/12/02/pubpat-claims-substantial-victory-in-lipitor-patent-challenge/

Regarding the MS reexamination, Mr. Ravichner said, "This reexamination is concluded, but that doesn't mean this patent can't ever be challenged again."

http://www.internetnews.com/bus-news/article.php/3576896

Well, that's good to know. If at first you don't succeed....

[patentsoldier]

Real Anonymous, you failed to make a good argument for cutting off post grant review to the larger public. The article about the Liptor patent speculates far into the future in order to arrive at the rather hopeful conclusion that the amendments will have no effect. One can speculate a lot less and arrive at a different and unsurprising conclusion -- the amendments will matter.

Rather than picking around the edges, what are your thoughts on the outcome of the JPEG reexamination (broadest claims finally rejected, patentee abandoned patent)?

Looking at the proposed statutory changes however, I don't see how ex parte reexamination is cut off from the public.

Inter partes however, that’s a different story, definitely looks like the “private party – public not allowed” sign hangs on the door.

[real anonymous]

"Rather than picking around the edges, what are your thoughts on the outcome of the JPEG reexamination (broadest claims finally rejected, patentee abandoned patent)?"

Sorry, patentsoldier, I'm not as familiar with the JPEG patent as I am with the FAT patent. But I can tell you that I haven't yet seen one instance where a PubPat reexam resulted in a [commercially significant] result that would not have come about without the PubPat reexam. (Didn't PubPat request reexamination of a patent that Columbia had independently agreed, in the face of lawsuits, not to assert?)

I know a little about reexaminations, and understand that there is much room for improvement in the way the system is set up. [If your competitor throws prior art at you in licensing negotiations to try to assert your patent is invalid, do you know what the best strategy for you as the patentee to do with your own patent often is? Doesn't that tell you there's something wrong with the system?]

That said, I actually think PubPat's post-grant review proposal warrants consideration - its certainly better in my mind than what's in S.1145 right now.

[BabelBoy]

I don't understand why the patent side doesn't adopt the TM side's approach. Publish the application, open an opposition period with no presumption of validity, grant the patent with a presumption of validity but exposed to cancellation, followed by an untouchable status in which the patent can be attacked only by those against whom it is asserted. The TM period of 5 years might be too long for a patent with a limited lifetime, but waiting 2 years should be long enough.

[BabelBoy]

I don't understand why the patent side doesn't adopt the TM side's approach. Publish the application, open an opposition period with no presumption of validity, grant the patent with a presumption of validity but exposed to cancellation, followed by an untouchable status in which the patent can be attacked only by those against whom it is asserted. The TM period of 5 years might be too long for a patent with a limited lifetime, but waiting 2 years should be long enough.

[BabelBoy]

I don't understand why the patent side doesn't adopt the TM side's approach. Publish the application, open an opposition period with no presumption of validity, grant the patent with a presumption of validity but exposed to cancellation, followed by an untouchable status in which the patent can be attacked only by those against whom it is asserted. The TM period of 5 years might be too long for a patent with a limited lifetime, but waiting 2 years should be long enough.

[Mark Nowotarski]

POPA has come out against the patent reform bill. http://www.bustpatents.com/unions.pdf

[CaveMan]

Please label Second Window: "admitted Infringers please line up here to provide damning admissions"