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.
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.
- Forgent Networks '672 "JPEG" patent: Broadest claims finally rejected;
