The change in threshold holds the potential for additional requests to be made. Some, including BIO president and CEO Jim Greenwood, argue that there will be frivolous requests, bumping up patent-related activities and costs.
Testifying a day earlier before the House Judiciary Subcommittee on Intellectual Property, Competition and the Internet, Kappos appeared to have an answer for that argument. He noted that under the House bill, he “may impose a limit on the number of inter partes reviews” as well as overall postgrant reviews during each of the first four years after the effective date. Just what those limits would be remains to be seen.
The new inter partes rules within HR 1249 are within the section of the law establishing a window for postgrant reviews of 12 months after the issue or re-issue of a patent, compared with nine months in S.23. Current law also allows postgrant examination petitions to be filed within 12 months.
One is a bit puzzled by the text: Current law also allows postgrant examination petitions to be filed within 12 months. In the current law, there are no time limits on inter partes re-exams and there is no post-grant review (aka opposition). Of the currently existent inter partes re-examination, MPEP 2611 states: Under 37 CFR 1.913, any third-party requester may, during the period of enforceability of a patent, file a request for inter partes reexamination.
Of prior user rights, the article noted:
“Such an expansion would degrade the patent system overall by substantially reducing patent certainty, and any reduction in patent certainty could seriously impair the process by which universities transfer their discoveries into the commercial sector for development,” [John C. ] Vaughn [of AUTM] testified before the subcommittee.
The article also states:
Many companies that serve as licensees for university patents intermingle those patents with their own in developing new products.
“The commercial prospects for those products would be at risk with the expansion of prior user rights, even with a university carve-out, since it would increase the vulnerability of nonexempt patents to assertions of a prior use defense by a competitor,” Vaughn asserted.
Expanding prior user rights, he said, would also discourage universities from publishing potentially patentable results. The subcommittee hearing defended the House language, with Kappos quickly adding that his position does not reflect the Obama administration’s[sic: ?], which has yet to weigh in. “Expanding the prior user defense, I believe, is pro-manufacturer, pro-small business, and, on balance, good policy,” Kappos said, asserting the university exemption.
** On inter partes, see article by Steve Weisburd