As part of the Suffolk Law School Podcast Series, Dr. Eldora L. Ellison, of Sterne Kessler Goldstein & Fox,
recently discussed post-grant review under the America Invents Act of 2011.
Exit Inter Partes Reexamination, Enter Post Grant Review
Currently, there are two types of patent reexamination: 1)
ex parte; and 2) inter partes. Ms. Ellison notes that while the first will
continue unaffected by the Act, the second will be phased out a year from
enactment. However, the standards for initiating inter partes reexamination will
be changed immediately.
In place of inter partes reexamination, the Act creates a
new proceeding called post-grant review. Ms. Ellison examines post-grant review
and offers several observations:
review allows any grounds for an invalidity challenge;
to comply with the "best mode" requirements will no longer be grounds for
can be initiated if the petition raises novel or unsettled legal questions
important to other patents/applications (though it is not yet clear what
constitutes a novel or unsettled legal question);
owners now have the opportunity to file a preliminary response; and
standard for review no longer depends on a substantially new question of
patentability. Instead, it must be established that more likely than not at least one of the challenged patent claims is unpatentable.
Ms. Ellison goes on to note that the Patent Trial and
Appeal Board is the new reviewing authority rather than the Central Reexamination
Unit. She also discusses post grant limitations/procedural issues and forecasts
several uncertainties regarding patents, proceedings and litigation.
Listeners can access
Ms. Ellison's complete podcast, Post
Grant Review under the America Invents Act of 2011, at Suffolk University's
Intellectual Property Law Podcast Series - IP Law Podcast Series.
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