Lawmaker Seeks to Expand Post-Grant Reviews

Senator Charles Schumer recently introduced legislation that would expand the scope of covered business methods eligible for post-grant review.  The “Patent Quality Improvement Act of 2013” would also remove the sunset provision and make the program permanent.

Post-grant review procedures allow a third party to challenge a patent’s invalidity on a number of grounds, including prior art, lack of enablement, lack of novelty, or inadequate written description. Thus, post-grant review allows parties to raise a number of new challenges that were previously reserved for litigation.

Schumer’s bill would expand the availability of post-grant review by amending the definition of “covered business methods” to remove the phrase “financial product or service.” The new definition would read as follows:

IN GENERAL- For purposes of this section, the term ‘covered business method patent’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of an enterprise, product, or service, except that the term does not include patents for technological inventions. (Emphasis added)

If the bill passes, it would then be up to the USPTO to provide precise definitions for the new terms.  While Senator Schumer has stated that the bill would “crackdown on ‘patent trolls’” by providing “small technology start-ups with the opportunity to efficiently address [infringement suits] outside of the legal system,” it has the potential to benefit a wide variety of patent holders.

In addition to this bill there are several others that are pending votes as well:

Manufacturing Innovation in America Act of 2013 (H.R. 2605)

Patent Abuse Reduction Act of 2013 (S. 1013)

End Anonymous Patents Act (H.R. 2024)

Patent Litigation and Innovation Act of 2013 (H.R. 2639)

MODDERN Cures Act of 2013 (H.R. 3091)

PATENT Jobs Act (H.R. 2582)

STOP Act (H.R. 2766)

PACES Act (S. 1478)

PARTS Act (S.780)

Medical Innovation Prize Fund Act (S. 627)

I will keep you updated as the bills are passed or defeated.

How Can I Help?

For detailed advice about post-grant proceedings, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Jury Still Out on Post-Grant Review

Post-grant review became available on September 16, 2012, along with several other America Invents Act provisions. However, the jury is still out on the potential impact of the new method to challenge a patent’s validity.

The new post-grant review procedures allow a third party to challenge a patent’s invalidity on a number of grounds, including prior art, lack of enablement, lack of novelty, or inadequate written description. Thus, post-grant review allows parties to raise a number of new challenges that were previously reserved for litigation.

Post-grant review is also designed to proceed quickly. Under the rules established by the U.S. Patent and Trademark Office, post-grant review proceedings should be completed within one year of their commencement. In addition, although it contains several aspects of litigation, including limited discovery, protective orders, and settlement, it should cost considerably less.

Challengers may also have a better chance of success. While courts presume that patents are valid unless “clear and convincing” evidence demonstrates otherwise, there is no similar presumption in post-grant review. Rather, patents are invalidated based on a preponderance of the evidence.

Although post-grant review certainly has substantial benefits, there are several limitations that may impact how widely it is used. First, challengers must act quickly. The proceedings must be commenced within nine months of a patent’s issuance. More importantly, the petition must include all of the evidence needed to prove invalidity.

In addition, post-grant review has several important implications when it comes to estoppel. Estoppel applies to any invalidity claims that were raised or reasonably could have been raised during the post-grant review. Because the grounds available for challenging invalidity are so broad during post-grant review, estoppel can severely handicap any subsequent litigation. Unlike inter partes reexamination, estoppel applies not only to district court litigation, but also to all USPTO and International Trade Commission proceedings.

Post-grant review is currently only available for “covered business-method patents,” and it will be some time before it expands to all patents. Therefore, the full impact of the new process will likely not become evident for several years.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman