Patent Law Practice Center

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…)

Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, sent in this article discussing the practical impact of the “but for” standard of Therasense and why Supplemental Examination as proposed in the pending patent reform legislation is not necessarily the best procedure to cure inequitable conduct.

Did Therasense Moot Supplemental Examination?

Supplemental Examination, as currently proposed in the patent reform legislation, would enable Patentees to effectively cure inequitable conduct for all but the most offensive conduct. This reform provision was designed to combat the plague of inequitable conduct charges that existed prior to the Therasense decision.

Supplemental examination would enable the Patentee to have the USPTO consider, reconsider, or correct information believed to be relevant to its patent if the information presented a substantial new question of patentability (SNQ).  If an SNQ is found to exist, the supplemental examination would include a full examination of the claims. (not just limited to patents and printed publications as in current reexamination practices).  Once Supplemental Examination concludes, the issues brought before the Office in the second examination cannot serve as a basis for an inequitable conduct defense. (more…)