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

You filed suit on a patent with a pending SNQ? Really?

Written by Brandon Baum , of baum legal and Practice Center Contributor.

Orinda Intellectual Properties filed suit on April 25, 2011 against a long list (50!) of electronics companies alleging infringement of US 5,438,560 purporting to cover recording and reproducing optical information on Blu-ray discs. Fine, lots of patents in the Blu-ray arena.

But a quick look at public PAIR shows that the USPTO found a substantial new question of patentability on March 7, 2011 and ordered a re-exam of all 3 claims of the ’560 patent.

 

 

 

 

Call me old-fashioned, but shouldn’t you get that substantial question of patentability straightened out before suing fifty companies for patent infringement?  Maybe there is some strategy I am not aware of (willfulness?), but I can imagine a judge being pretty upset with the plaintiff if the patent goes down in flames at the USPTO.

 

05.3.11 | Patent Litigation, posts, USPTO | Stefanie Levine