[This is the eighth in a series of postings regarding the various proposals in the Patent Act of 2005.]
Inter Partes Reexamination
The American Inventor’s Protection Act (The American Inventors Protection Act was enacted November 29, 1999, as Public Law 106-113 (AIPA) introduced the concept of inter partes reexamination prospectively (post-1999). (35 U.S.C. 314). This proposal would expand the availability of this procedure to all patents. It favors both the patentee and the non-patentee in different respects.
This form of reexamination is intended to be an alternative/improvement to the pre-existing ex parte reexamination. Inter partes reexamination may be requested by any third party and they are permitted to present prior art (comprising prior patents and printed publications) for review by a patent examiner. The requestor may also file comments on the patentee’s response to the prior art presented.
BUT, if the requestor fails, they have sealed their own coffin. The requestor is estopped from challenging any fact, in court, that was established during the inter partes reexamination procedure, unless that fact is later found to be erroneous based on information that was unavailable at the time of the inter partes reexamination.
Inter partes reexamination may lessen the volume of patent litigation but it is unlikely that this method will be utilized by potential defendants unless they have an airtight argument. When such arguments exist, however, this proposal offers a significantly less expensive alternative to infringement.
Previous: Part 7. Continuation Applications.
Next Up: Part 9. Prior User Rights.
Today’s post comes from Guest Barista Ria Schalnat, a registered patent attorney in Frost Brown Todd’s Cincinnati office.
