Thursday, April 19, 2007

Aspects of the proposed Patent Reform Act of 2007

Further to press discussion of the proposed Patent Reform Act of 2007, note certain aspects:

Patent Reform Act of 2007

Section 3: first to file
Among other things, "interferences" become "derivation proceedings."

Section 6: post-grant procedures

Part (a) amends re-examination procedures.
Part (e) creates post-grant review procedures
Cancellation petition must be filed not later than 12 months after patent grant {"first window") OR (likelihood of economic harm or there is allegation of infringement or permission from patentee)("second window")
Preponderance of evidence evidentiary standard.

Section 7: patent trial and appeal board
Section 8: reexamination
Section 9: submissions by third parties
Printed publications may be submitted before earlier of (notice of allowance) or (6 months after publication /date of first rejection)
Section 10: venue and jurisdiction
Section 11: regulatory authority
Director may promulgate rules that Director deems appropriate to carry out provisions of this title.

The "second window" in the post-grant review. By allowing a patent challenger to challenge at ANY time, and allowing a preponderance of evidence standard, this second window OPENS THE FLOODGATES to patent challenges. Here is how Senator Leahy sees it:

§ 322.– The petition for cancellation can only be filed (1) within 12 months of the patent’s issue or reissue (known as the “first window”), or (2) if there is substantial reason to believe that the continued existence of the challenged claim is likely to cause the petitioner significant economic harm, the petitioner has received notice from the patent holder alleging infringement by the petition, or the patent owner consents to the proceeding in writing (known as the “second window”).

Leahy writes:

Second, poor patent quality has been identified as a key element of the law that needs attention. After a patent is issued, a party seeking to challenge the validity and enforceability of the patent has two avenues under current law: by reexamination proceeding at the USPTO or by litigation in federal district court. The former is used sparingly and some see it as ineffective; the latter, district court litigation, can be unwieldy and expensive. S. 3818 had created a new, post-grant review to provide an effective and efficient system for considering challenges to the validity of patents. The Patent Reform Act of 2007 has improved that system, and in particular, we have addressed concerns about misuse of the procedure. Post-grant review will include protections to avoid the possibility of misuse of the post-grant process. The Director is instructed to prescribe rules to prevent harassment or abuse, successive petitions are prohibited, and petitioners are stopped from raising the same arguments in court.


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