By Kevin B. Laurence and Matthew C. Phillips of Stoel Rives LLP | Kevin Laurence and Matt Phillips are partners at Stoel Rives LLP. They authored a treatise titled “Patent Reexamination and Reissue Practice,” from which they teach a multi-day course for Patent Resources Group. Kevin’s technical focus is pharmaceuticals, chemistry, and medical devices; Matt’s is electronics and computer technologies. They can be reached at kblaurence@stoel.com and mcphillips@stoel.com. |
Introduction
If the Patent Reform Act of 20091 is
passed, a dramatic change will occur to the review of granted patents. There will be three vehicles for challenging
the validity of patents at the U.S. Patent & Trademark Office (PTO) including (1) ex parte
reexamination, (2) inter partes reexamination, and (3) a new option, referred to as post-grant
review (PGR) proceedings.2 This article
provides a comparative overview of these vehicles.
Availability
As summarized in the adjacent chart, PGR proceedings will be available only during the first year of the patent.
By contrast, ex parte reexamination will continue to be available during the enforceability period of
a patent, and inter partes reexamination will remain available for challenging the validity of a patent
that resulted from an application filed on or after November 29, 1999.3
Basis
As the chart also indicates, PGR proceedings provide more bases for a third party to challenge a patent than
reexamination. Unlike reexamination, PGR proceedings will be able to resolve almost all types of patentability
issues. Presently and under the bills, reexamination challenges can be based on lack of novelty, obvio...
