AIA: Post-Grant Review Intended to Curb Litigation

Posted on October 29, 2011 by Brian Wm. Higgins

          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.
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AIA Goal: Reduce Patent Litigation

Posted on October 16, 2011 by Brian Wm. Higgins

          Designed to limit unnecessary and counterproductive litigation costs, the America Invents Act (AIA) was signed into law by President Obama on September 6, 2011, to the praises of many in industry.  The law changes how and where patent lawsuits can be filed, eliminates certain defenses to patent infringement allegations, and effectively eliminates certain private rights of action.  Even now, parties whose patent enforcement cases are pending in federal courts around the country or are about to be filed, are having to step back and rethink their litigation strategies. One of the goals of the AIA is to reduce the amount of litigation in the United States. 

Reducing Litigation Through Implementation of Post-Grant Review Proceedings

          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 upon 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.  But 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 used by accused infringers, often used as a delay tactic. 

          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.
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Patent Secrecy Act Activity Drops in FY08

Posted on January 8, 2009 by Brian Wm. Higgins

     Ever wonder what the "LR" or "L&R" code means in the electronic file history of a pending patent application?  It refers to the Patent Office's Licensing and Review function, which is an early screening function applicable to all provisional applications filed under 35 U.S.C. 111(b), nonprovisional applications filed under 35 U.S.C. 111(a), and international applications filed under the Patent Cooperation Treaty (PCT).  During L&R screening, applications are reviewed for the purposes of issuance of a foreign filing license and to identify subject matter that, if disclosed, might impact national security. If warranted, applications may be referred to an appropriate governmental agency for consideration of restrictions on disclosure of the subject matter, which may ultimately lead to a Secrecy Order being issued (see MPEP). 

     The number of Secrecy Orders issued in FY '08 are shown (parenthetical values reflect change relative to FY '07 data) (source: FAS):

  • Total Secrecy Orders in Effect FY08: 5,023 (-21)
  • New Secrecy Orders Imposed: 68 (-60)  
    • ARMY: 8 (-14)
    • NAVY: 8 (-20)
    • AF: 20 (-25)
    • NSA: 20 (-1)
  • Secrecy Orders Rescinded: 47 (-21)
  • "John Doe" Secrecy Orders: 22 (-31)

     As was noted previously on this website, patent secrecy activity is relevant to Maryland because the counties surrounding Washington, D.C., are home to many government agencies and government contractors that may be involved in patent activity possibly triggering secrecy review. According to Patent Office statistics, many of the agencies/contractors in this area are high on the list of the number of patents issued each year to Maryland organizations, including Johns Hopkins University, which operates the Applied Physics Laboratory (Howard County), a major government defense contractor; the Navy, which operates the Naval Research Lab (Prince George's County); the Army, which operates the Army Research Lab and biodefense research agencies in Frederick, MD; Northrop Grumman (Anne Arundel County); the National Security Agency (NSA) (Anne Arundel County); and a few of the over 300 biotechnology companies in Maryland (mostly located in Montgomery County).

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