Nearly 30 years ago, Congress created the administrative reexamination process. It was intended to be used by the Patent Office to review the validity of already-issued patents on the request of either the patent holder or a third party challenger. It was expected that reexamination would serve as an effective and efficient alternative to often costly and protracted district court litigation.
The initial reexamination statute had several limitations that later proved to make it a less viable alternative to litigation for evaluating patent validity than Congress intended, and changes to the system did little to put a dent in patent enforcement litigation. Indeed, the reexamination process became another litigation strategy by accused infringers.
The AIA amends existing reexamination procedures and establishes a new post-grant review procedure. The new procedures are expected to change the standard for instituting reexaminations and reviews, time limits, burdens of proof, and how discovery is taken.
Whether the new post-grant review procedure will in fact reduce patent litigation will be measured over time. But what is clear is that the filing or institution of a post-grant review proceeding does not limit a patent owner’s ability to commence litigation to enforce his or her patent rights.