Introduction

POST PATENT GRANT REMEDIES

Reexaminations

Though many law firms are still reluctant to pursue a litigation strategy which includes reexamination requests, we have long believed that reexaminations are effective in dealing with competitors’ patents, even very strong patents. This belief is based on a familiar list of advantages that reexamination offers over litigation:

(1) no presumption of patent validity at the Patent Office;
(2) no requirement of proof of invalidity by clear and convincing evidence at the Patent Office;
(3) high level patent examiners, rather then sometimes less technically astute jurors, to consider patentability;
(4) a renewed duty for the patentee to disclose material information to the Patent Office, including information regarding pending litigation; and
(5) the possibility that the patentee will make amendments or arguments which constitute disclaimers of claimed subject matter or which create estoppels that preclude the patentee’s later assertion of the doctrine of equivalents.

There is also the major consideration of legal expense – reexaminations are not inexpensive, but considerably less expensive than the alternative of District Court litigation.

Though reexaminations, both ex parte and inter partes, continue to be less common than District Court litigation, they have already resulted in quite a number of notable successes for accused infringers.

The purpose of this Blog is follow significant reexaminations and to identify successful strategies for reexamination requestors.

Oppositions

Each year we expect that Congress will enact a new post-grant opposition system, and each year we are disappointed. Eventually, though, we will have such a system and it will be an important complement to reexamination as a tool for dealing with competitor’s patents.

Important features of such a system, as yet undetermined, are the time periods within which oppositions may be filed and the type of prior art that may be relied upon to attack patentability. Regarding relevant prior art, it is quite likely that any opposition system would consider prior uses or prior sales – prior art which is not allowed in reexaminations.

It is also impossible to know the precise procedures that the Patent Office will apply to oppositions. Still, the procedures adopted are quite likely to parallel those already used in reexamination and interference proceedings.

Interferences

It is possible that interferences will be replaced with a first-to-file system. Still, there is likely to be a transition period. Also, interference rules and case law are likely to be applied to opposition practice.