Applying the Lessons of Re-Examination to Strengthen Patent Post-Grant Opposition

摘要

A review of inter partes reexamination requests between the fiscal years 2001 to 2005 has determined that a large majority of third-party requesters did so for the purpose of settling patent disputes using administrative mechanisms. Removal of the statutory estoppel is likely to increase the volume of requests for inter partes reexamination. Congress should consider temporarily repealing or substantially lowering the statutory estoppel limitations in the current inter partes reexamination statutes and analyzing its effects prior to enacting the Patent Reform Act of 2005. In some instances, third parties, also defendants in patent infringement suits, requested inter partes reexamination to attack the validity of a previously litigated patent. Although the Patent Reform Act limits similar challenges to patent validity after litigation, a similar prohibition should be adopted for inter partes reexamination to make the resolution process more efficient, rather than prolong it.