Saturday, April 28, 2007

"Second window" post-grant review comes under fire

In an article titled Berman H.R. 1908, Patent Reform Bill, Pronounced D.O.A., Harold Wegner discusses the strong opposition to the "second window" of post-grant review in the currently proposed patent reform bills. Wegner wrote:

Going into the hearing, the Chairman clearly recognized the total impasse from the last Congress over "second window" post-grant review and that the current legislation as introduced is dead in the water.

Wegner continued on post-grant review (post-grant opposition), noting that misuse in the current re-examination system may predictably be carried over into the proposed post-grant review:

Perhaps the single most constructive development that arose from the hearing [of April 26, 2007] was the focus upon the abuse of the current reexamination system that foreshadows similar problems under the proposed post-grant review system: Serial reexaminations and post-litigation reexaminations even after a final court decision have been unreasonable and made it impossible for the winner of a trial costing the parties millions of dollars to enjoy a quiet patent title: Even after winning at trial, reexaminations can be filed that may take many years to resolve, some just rehashing old issues lost at trial.

Wegner illustrated that pharma was NOT buying into the "second window":

Quite clearly, the Amgen testimony, better than any representative for any of the various organizations, demonstrated the absolute, positive necessity the biotechnology community has for a highly reliable post-grant proceeding and one where there is early, quiet patent title ensured. Amgen persuasively explained the position of his company in a scenario that is echoed by all major pioneer pharma and biotech entities and manifests the futility of any attempt to ram through Congress a one-size-fits-all "second" window solution.

Wegner did not note that there might be smaller players, in the IT industry and elsewhere, who might have similar opposition to the "second window." The problem is not just "industry specific." Investing in a massive system of patent re-inspection violates the basic quality precepts taught by Deming.

Wegner also wrote: It must be remembered that the 1980 original reexamination law could have been effective, including inter partes participation and including expedited consideration, all possible within the scope of the reexamination law and certainly within the budget of the PTO. The fact that the PTO today denies the "special dispatch" examination of a reexamination proceeding of importance speaks for itself. There is nothing to preclude a PTO-run post-grant review from similar political interference from the Director.

Wegner also noted that the OPPOSITION of the 21st Century Patent Coalition SEPARATELY spells doom for the current patent reform legislation:

Gary L. Griswold, 3M, for the 21st Century Patent Coalition spoke, as usual, strongly opposing any "second window" post-grant review and opposing other IT/EE initiatives. While the death of the current legislation is a certainty with or without the strident voice of the 21st Century Patent Coalition, the intransigence of the 21st Century Patent Coalition is perhaps the best indicator that no Phoenix can ever arise from the ashes of the current legislation.

IPFrontline separately has text from the "21st Century Patent Coalition" on this point:

To test questionable patents after they are issued, the Coalition supports a post-grant opposition proceeding in the USPTO where the public can promptly (within 9 months of grant) challenge the validity of a patent on any ground, but with incentives that encourage the public to promptly bring such challenges and with protections for inventors against harassment. To make this type of validity challenge administratively feasible, however, it is essential that it be accompanied by three other changes – limit “prior art” to publicly accessible information through adoption of the firstinventor-to-file principle, repeal the “best mode” requirement, and limit the unenforceability defense to cases of actual fraud on the PTO.

While the Coalition notes that the recommendations of the NAS and FTC for a post-opposition procedure are implemented in the legislation, we oppose allowing third parties unlimited “second window” opportunities to seek review of patents, on subjective grounds, and on the basis of a preponderance of the evidence standard of proof for facts. This will subject patentees, especially patentees of limited means, to harassing tactics that could significantly limit the benefits of the patent system to them and the public. In addition, all of the necessary prerequisite changes – first-inventor-to-file, elimination of best mode, and elimination or restriction of the unenforceability defense must accompany the post-grant procedure. As with other sections of the legislation, the Coalition pledges to work with the Congress to develop a post-grant review procedure to achieve objectives foreseen by the NAS and FTC while providing the patentee with safeguards against serial challenges to provide a measure of “quiet title.”

See also Post-Grant Opposition: a Bad Idea.

See also House Panel Urges Patent Bill Compromise.

See also The Patentability Bar & Recourse at


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