It is the thesis of this article that 37 CFR 42.73(d) estoppel is likely to be implemented in much the same way as interference estoppel under 37 CFR 41.127(a)(1) and that, just as members of the interference bar have learned to live with interference estoppel, members of the now-forming post-grant patent proceedings bar will learn to live with 37 CFR 42.73(d) estoppel.
The Leahy-Smith America Invents Act, Public Law 11-29 (Sept. 16, 2011)(hereinafter referred to as "the AIA") created new tools to challenge patents at the U.S. Patent and Trademark Office (hereinafter referred to as "the PTO"). These tools include the inter partes reviews, post-grant reviews, and transitional covered business method patent reviews (hereinafter referred to as "CBM reviews"), all of which have been promised to be faster and lower-cost alternatives to infringement litigation and ITC proceedings. These new proceedings have many benefits, and the public is already making some use of them. However, they come with what many perceive to be a significant drawback that has received much attention in the blogosphere. Once one of the proceedings reaches a final written determination that a claim is not unpatentable on the ground or grounds raised in that proceeding, the petitioner is forever foreclosed from making any other subsequent attack on that claim in the PTO on any ground that was raised or reasonably could have been raised in that proceeding. This is known as post-grant proceedings estoppel, and it is found in 37 CFR 42.73(d). Some commentators suggest that the post-grant proceeding estoppel will bias potential patent attackers against using the AIA's new post-grant proceedings and toward using old-fashioned district court and ITC litigation. These commentators believe that issue preclusion arising from a district court judgment is less dangerous than the post-grant proceeding estoppel. It is the thesis of this article that 37 CFR 42.73(d) estoppel is likely to be implemented in much the same way as interference estoppel under 37 CFR 41.127(a)(1) and that, just as members of the interference bar have learned to live with interference estoppel (and to love it when it cuts in their favor and to hate it when it cuts against them), members of the now-forming post-grant patent proceedings bar will learn to live with 37 CFR 42.73(d) estoppel. As explained by one of the authors in another article, interference estoppel may be worse than issue preclusion, but it can be very useful to the practitioner who knows how to take advantage of it. [footnotes omitted]
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