Patent Reform Act - Part Deux

Let me get this straight, the USPTO is extremely overburdened and therefore had to drop the continuation bomb on the patent world last month…but the House wants to add another USPTO job – ala post-grant review in H.R. 1908?  So basically, instead of using USPTO resources for the backlog, let’s add to the USPTO case load.  Interesting…

Before tackling what the House approved in H.R. 1908, first a quick review of what post-grant review in the USPTO consists of today.  There are basically four types of review subsequent to a patent issuing.  They include:

1.  an applicant filing a reissue;

2.  an interference between a patent and pending application;

3.  a patent owner or third-party requesting reexamination of a patent; and

4.  the Director initiating a reexamination.

The post-grant review in H.R. 1908 is a different animal.  Generally, post-grant review would allow a third party to contest the validity of claims within 12 months of issue under a preponderance of the evidence standard.  Post-grant review allows for the use of prior art, written testimony of witnesses, or any other information that the Director may require as a basis for cancellation.  This is a step beyond the reexamination process that only allows third parties to submit prior art publications and patents. 

Not all questions regarding patent validity are covered.  If a third party wants to request cancellation of issued claims based on the best mode requirement, post-grant review won’t help.

In some ways, post-grant review actually may be helpful for patent owners.  Third parties must set forth the basis for cancellation of each claim with their evidence.  This turns post-grant review into a sort of mini-trial on validity showing the other side’s hand.   Unfortunately, even a mini-trial costs money…and this mini-trial only covers validity.