AIA Calls for Discovery, but PTO Doesn’t Really Know What that Entails


A recent law suit against the USPTO has brought to light an issue regarding the litigation process following the patent reform of the America Invents Act. The issue is that the USPTO has never provided for discovery in its review proceedings policies before, but within the AIA’s provisions for inter partes review and post-grant review there is a call for a discovery process.

The National Law Journal reports Cordis Corp., a Johnson & Johnson subsidiary, sued the U.S. Patent and Trademark Office and its director, David Kappos, based on the USPTO’s refusal to let Cordis subpoena companies challenging its patents in an inter partes re-examination. The USPTO stated its policy is not to allow discovery in these review proceedings.  The ultimate issue emerging from this suit goes beyond whether Cordis is entitled to subpoena certain parties.  Because the AIA reforms the law such that discovery must now be a part of the inter partes review process and the post-grant review process, the issue becomes bigger as it becomes clear that there has yet to be a standard for discovery within PTO proceedings and the number of litigation matters is due to increase.

With no precedent to follow, discovery guidelines have to be established either through years of law suits and proceedings until precedent becomes settled and proposed rules are enacted. Those of you that wish to express your concerns and comments regarding the discovery issue still have time to have your thoughts heard by the USPTO. According to the Federal Register, 37 CFR Part 42 [Docket No.: PTO–P–2011–0094], Practice Guide for Proposed Trial Rules, written comments must be received on or before April 9, 2012 to ensure consideration.

For more on the Cordis suit against the USPTO and Kappos, check out the National Law Journal article here.

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