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Post-Grant Review and Estoppel in the Current Patent Reform Bill

When the Senate returns from recess next month it will be debating patent reform, and in particular the Leahy-Smith  America Invents Act.  A copy of the redlined version passed by the House is found here.  (thanks to Brad Pedersen of Patterson Thuente Christensen Pedersen, P.A. for providing this version).  Don’t let the amount of redlining fool you because many of the amendments amount to relatively minor rewriting of provisions.  The House and Senate bills are substantially similar.

This is a controversial bill for many reasons.  Some think that it goes too far in adopting a first-inventor-to-file approach, as opposed to the current first-to-invent system.  Some don’t think it goes far enough with respect to patent litigation reform.  There are also concerns that whatever this bill provides, Congress will not give the Patent Office enough financial support to carry out its many provisions.

Whether you agree with the proposed patent reform or not, there is a fair chance this legislation will become a reality soon.  The current version of the patent reform bill (both House and Senate) has a provision for Post-Grant Review that was discussed generally in an earlier post.  The post-grant review option allows persons other than the Patent Owner to petition the Patent Office to review a patent on several grounds if filed timely (currently, within nine months of issue of the patent).  This review can be petitioned on more grounds than those available in traditional reexamination (i.e., the grounds relate to patentability in general and are not limited to anticipation and obviousness grounds based on printed publications and patents).  But this option also includes an estoppel rule to those who petition for such review.  The estoppel bars the Petitioner from asserting in a later action (administrative or civil) “any ground that the Petitioner raised or reasonably could have raised during that post-grant review.” 35 U.S.C. 325(e).  Therefore, the estoppel arising from post-grant review is substantial.  [Note: estoppel does not apply to a petitioner exiting the process via settlement and requires a final written decision under 35 U.S.C. 328.]

This approach gives challengers more options for correction of an issued patent than litigation and traditional reexam.  In my next post we will explore some of the issues that this estoppel makes if adopted substantially as proposed in the redlined version of the Leahy-Smith America Invents Act.

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Timothy Bianchi
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