A short article covering this topic by Foley & Lardner entitled "USPTO reverses course to permit anonymous ex parte reexamination requests" is here. Boiled down, the PTO decided that identification of the real party in interest requesting reexam was not required because the practitioner requesting reexam is required to include a "certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request."
However, the article notes;
In eliminating the requirement to identify the real party in interest, the USPTO has left open the possibility that a requester’s estoppel certification might be called into question during the ex parte reexamination proceeding:
If the Office becomes aware of facts that call the certification into question, the Office will determine, on a case-by-case basis, whether the request for ex parte reexamination is prohibited by statute.
Thus, patent owners may have a new way to terminate an ex parte reexamination against their patents if they learn the identity of the real party in interest — or of its privies – and are able to bring that information to the USPTO’s attention.
I can see this set up creating some potential for mischief, and understand why the Office first wanted identification. Thoughts?
This is a great post, Mr. Bianchi. In countries with wekaer patent rights, there always the danger that well-funded entities can use that lesser standard to bankrupt patentees. But we live in the USA. 780 patent reexamination requests were filed in 2010. Patent reexamination is high risk but it can strengthen investor confidence in the certainty of patent rights.
Are you in the US? If so, at a minimum, your eduoaticn should fulfill the requirements to take the USPTO registration examination (commonly referred to as the patent bar ). If you cannot fulfill these requirements, then you cannot become a registered agent/attorney. This will make finding a job difficult.As far as excelling at the job, I don’t think there’s a standard answer to that question. It really depends on what you mean by being excellent. Are you talking about becoming the highest biller at your firm? Are you talking about building your own cliente8le? Are you talking about writing patent applications that withstand litigation scrutiny? As a general matter, I think good oral and written communications are the most important.As far as competition goes, I’m not sure there’s any more competition for agent jobs than attorney jobs. In both cases, the market can be competitive depending on your eduoaticn level, experience, location, and technical area. A substantial barrier of entry to many firms, especially larger ones, is grades. With good grades, I think there are many more options from which to stand out from the competition.
How does res judicata come into play when it is the governement itself that has set up the avenue of patent challenge? in a sense, isn’t the government removing res judicata by providing avenues that can be taken regardless of what a court does? Isn’t this very much a left hand (Congress) versus right hand (Judiciary) battle, and doesn’t the right hand hold sway per the constitutional power to set patent law?
I make these comments with no affiliation to, or payment from, any entity.
Mr. losing, on further thought, I fully understand why a company losing a validity challenge in court may want to have the government declare the patent “invalid” in a sparked a re-examination. They of course intend to introduce future products that may infringe the patent and the like to clear the path, so to speak.
But this remains, in my view, a collateral attack on a court judgment and is fundamentally against the principles of res judicata.
“The losing party has nothing to gain”
Oh really…?
“Regardless of its technical legality, I would disbar any attorney”
Oh really…?
not thoughts, my instincts would be that the duty of candor would trump any duty of confidentiality and the lawyer would have to report, but at minimum he’d have to make “noisy withdrawal,” getting out of the matter and saying, basically, “don’t rely on anything I’ve submitted” and probably, dropping the client all together, but that depends on some other facts. Read Molins v. Textron’s 3 opinions on the issue you raise…
I now have some more stuff to add to the new edition of the book! Any other thoughts?
I agree with Newman that anyone who lost in court should be precluded from requesting ex parte reexamination regarding the same claims. The losing party has nothing to gain and is simply being malicious. Regardless of its technical legality, I would disbar any attorney who engaged is such skulduggery.
However, if the losing party can overturn the court case if the PTO amends or cancels the claim he was held to infringe,then we have something a lot worse. We have a collateral attack on a court judgment.
What if an attorney makes the certification on the basis of assurances from the client and subsequently learns that an estoppel does in fact exist? Is the attorney required or even permitted to report that fact to the Office? What if the attorney learns of the estoppel in an otherwise privileged communication from the client? My first reaction is that the attorney would not be permitted to communicate that information to the Office especially if received in a privileged communication but would have to withdraw from representation. I am curious what anyone else thinks.
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