Applying the Lessons of Re-Examination to Strengthen Patent Post-Grant Opposition

Authors

• Eric B. Chen

Abstract

Due to the exceedingly high cost of challenging patent validity in U.S. district courts, a lower cost administrative option has garnered considerable interest. A recent evaluation found that 46% of litigated patents are held invalid. However, because about 95% of patents issued in the U.S. are never challenged due to their limited commercial value, and since the resources of the United States Patent and Trademark Office (USPTO) are limited, the USPTO's initial patent validity examinations are not very detailed It is more efficient for the USPTO to wait and make detailed validity decisions only in those select situations where patent validity is actually challenged. Patent reexamination, either ex parte or inter partes, is the current administrative mechanism for challenging the validity of issued U.S. patents. Inter partes reexamination has rarely been used due to limited participation by challengers and statutory estoppel provisions. Many proposals for enhancing post-grant review proceedings have been presented, including the recently introduced Patent Reform Act of 2005. This article reviews inter partes reexamination requests filed between 2001 to 2005 to determine the existence of any concurrent litigation at the time the request was filed. Any future post-grant review procedures should overcome the shortcomings of the current inter partes reexamination process.

Part I of this article provides an overview of the current reexamination statutes. Part II discusses proposed post-grant opposition legislation and in particular, the Patent Reform Act of 2005. Part III provides data from the inter partes reexamination requests filed with the USPTO between the fiscal years 2001-2005 as to the percentage of requests involved in concurrent litigation. Part IV recommends removing or substantially lowering the estoppel provision from the current inter partes reexamination statutes and analyzing its impact prior to enacting new legislation. Moreover, Part IV recommends that the use of inter partes reexamination to challenge a previously litigated patent should be prohibited.

Recommended Citation

Eric B. Chen, Applying the Lessons of Re-Examination to Strengthen Patent Post-Grant Opposition, 10 Computer L. Rev. & Tech. J. 193 (2006)