Thursday, April 26, 2007

Patent reform: what to do about interested third parties in post-grant review?

Further to the discussion of post-grant review / post-grant opposition, one aspect of the proposed cancellation proceeding not present in the currently available re-examination is the ability to use declarations.

But does the introduction of "hired guns" into a post-grant proceeding really help in weeding out "bad patents"? What if the declarant has some form of conflict-of-interest?

In the context of declarations used by the patent applicant, a failure to disclose a relationship to the applicant can constitute inequitable conduct. Refac Int'l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 1581-82 (Fed. Cir. 1996); Paragon, 984 F.2d at 1191-92. See previous IPBiz post, Ferring v. Barr. Split on inequitable conduct at CAFC. But what about a benefit to a nominally third party declarant that will ensue if the declarant's statements are accepted?

The so-called "second window" of post grant review opens up all kinds of interesting problems.

See also Loring's 1998 patent application shows interest in non-mouse embryonic stem cells.


Post a Comment

<< Home