ABA Journal


The National Pulse

Patent lawyers ponder the changed post-grant process

Feb 1, 2013, 09:09 am CST


We are huge fans of filing observations and oppositions in the European Patent Office.  However the cost estimate is simply not accurate.  I have never seen one for oly $20,000.  I always budget at least $100,000 and they usually take 2-3 years, but can take longer, especially if appealed, and even longer if sent back to the opposition division after appeal.

By Patrea Pabst on 2013 01 30, 5:14 pm CST

A few questions:

1) In order to file for post-grant review, must a party be in the position of (potentially) infringing a patent—and have “skin in the game”?  Or could public interest groups (like EFF) file to invalidate patents that they have no desire to practice, for public interest or other grounds?  Could confederates of the patentee, seeking to get a favorable ruling (and potentially foreclose subsequent claims—see next question), file bogus review cases?

2) How much does stare decisis apply in these preceedings?  Can multiple post-patent reviews be filed (by different parties) against the same patent?  Or does a subsequent claim require significant new evidence or arguments not addressed in a prior claim?  Can a weak case brought by the patentee, or his ally, foreclse stronger cases brought be actual defendants?  Can a patentee appeal or re-try an adverse finding?

3) Does a ruling in favor of a patentee estop only invalidity arguments against the party who brought the case, or does it estop invalidaty arguments generally, or otherwise raise the bar for defenses of invalidity in lawsuits, including those made by defendants not involved in any post-grant review?

By EngineerScotty on 2013 02 02, 8:33 pm CST

Scotty—good questions. I read “A party that uses post-grant review to attack a patent’s validity is thereafter estopped from raising any issues the party could reasonably have raised in the proceeding” to men the party is estopped regarding issues. Period.

I wonder what brave soul (so to speak)  will be the first to jump into the pool?

By ECS on 2013 02 05, 6:14 pm CST

Add a Comment

We welcome your comments, but please adhere to our comment policy.

Commenting is not available in this channel entry.