Patent Law Practice Center

House Version Of Inter Partes Review & Wasted Time

Scott A. Mckeown, Partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant, sent in this article discussing to what extent inter partes reexamination will change if H.R. 1249, the House’s proposed patent reform legislation, is passed into law.

Inter Partes Review, 5 Months to a First Action?

Should the proposed patent reform legislation pass into law, inter partes reexamination will gradually cease to exist. In place of inter partes patent reexamination will be an entirely new mechanism known as Inter Partes Review.

Inter Partes Review will not be conducted by patent examiners of the Central Reexamination Unit, but instead by the Administrative Patent Judges of the Patent Trial & Appeal Board (now known as the BPAI). As the new proceeding is conducted by APJs, limited discovery practices will be provided. Beside these procedural changes, the substantive analysis remains largely the same. …at least in H.R. 1249. (more…)