Patent Office Asks Congress to Amend Patent Act to Create Better Options for Post-Grant Review and Inter Partes Reexaminations

Under the American Inventors Protection Act (AIPA), the Patent Office is required to submit a report to Congress evaluating the success of the newly enacted inter partes reexamination proceedings.  Today, the PTO released its Report to Congress on Inter Partes Reexamination [PDF].

Over the past several years, the buzz surrounding inter partes reexamination has increased.  However, the report notes that the growth of such re-exams has been slow.  For example, only 27 inter partes reexaminations were filed in 2004.

Based upon a review of the statute and comments from interested parties, the USPTO released a set of recommendations for amending the Patent Act in order to improve inter partes reexamination.  The PTO points to three areas that need improvement:

  • Clarifying the inter partes reexamination estoppel provisions.
  • Permitting the requester of an inter partes reexamination additional opportunities to provide input as to Office actions.
  • Extending the requester’s statutory for comment (currently 30 days) after the patent owner responds to an Office action, or to permit the USPTO Director to set the period for comment by rule.

In addition, the Patent Office noted that their Post-Grant Review proposal offers “a comprehensive and desirable way to address patentability issues after a patent has been awarded.”  Generally, the proposed Post-Grant Review would provide a more comprehensive review model and allow a more adversarial review presided over by USPTO administrative patent judges. The Review would include closely controlled discovery and cross-examination upon the challenger’s presenting sufficient grounds that one or more of the patent claims are unpatentable.