The Metamorphosis of Inter Partes Reexamination

Jun 200419 Berkeley Tech. L.J. 971

There is a compelling need to metamorphose inter partes reexamination into a post-grant review proceeding because adoption of a welldesigned post-grant process would improve patent quality, reduce the cost of confirming patentability, and increase efficiency. ... Post-grant review of a patent currently takes place before the USPTO when: (1) an applicant files an application to reissue a patent; (2) when an interference is declared; (3) a patent owner or a third-party requests reexamination of the patent; or (4) the Director initiates reexamination of a patent on his own initiative. ... Ex parte reexamination, whether initiated by a patent's owner, the USPTO Director, or a third party, and reissue examination have been the traditional post-grant review tools. ... First, the threat of estoppel, particularly for later filed challenges, would encourage a third party to fully develop the set of patentability issues reasonably pertaining to a patent prior to initiating a challenge. ... The post-grant inter partes proceeding would be initiated by a third party, and have limited discovery; be heard before a tribunal of APJs without examination to minimize delay and yield the predictability of trained legal experience; enlarge the scope of contestable issues to provide a comprehensive alternative to litigation; and match the levels of estoppel and evidentiary standards to the timing of the proceedings to encourage early patentability challenges. ...