New Inter Partes Review Grounds To Stay Most Patent Litigation?
Written by Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor.
Estoppel Provisions Disfavor Parallel Proceedings
During a [recent] webinar on post grant USPTO proceedings, I compared the current estoppel provisions of inter partes patent reexamination to that ofInter Partes Review. The Inter PartesReview (IPR) estoppel provisions are similar in some respects to the currentinter partes patent reexamination (IPX) provisions, but differ in significant respects.
In some ways, the new estoppel provisions are designed to address shortcomings of the existing IPX estoppel provisions. For example, whileIPX estoppel does not apply to ITC proceedings, the IPR provisions extend estoppel to ITC proceedings. Additionally, while the IPX provisions use the terminology “raised or could have raised,” the new IPR provisions recite “raised or reasonably could have raised during Inter Partes Review.” Ostensibly, this language softening is designed to provide some slight wiggle room to account for the late found reference in a far away library of Siberia.
Of perhaps much greater interest however is the aspect of IPR estoppel that may compel judges to stay a parallel litigation pending IPR. (more…)
Unwary Litigants to Lose USPTO Review Option Under Patent Reform
Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the important changes to inter partes patent reexamination that will become effective upon enactment of the patent reform legislation.
Patent Reform & Inter Partes Review
Last week, I discussed on Patents Post Grant some important changes to inter partes patent reexamination that will become effective immediately upon enactment of the patent reform legislation. Namely, that the standard for initiating inter partes reexamination will become stricter. The new standard is defined as: a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. This new standard replaces the current standard that requires a Substantial New Question of Patentability (SNQ), perhaps within a matter of days.
Inter Partes Review will ultimately replace inter partes patent reexamination on the one year anniversary of the enactment of the patent reform legislation. Thus, the interim standard for the last year of inter partes patent reexamination will help the USPTO prepare to transition to the new Inter Partes Review proceeding, which will use the same standard. (more…)
08.31.11 | Inter Partes Review, Patent Reform, posts, Reexamination | Stefanie Levine
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10.3.11 | America Invents Act, Inter Partes Review, Patent Litigation, posts | Stefanie Levine