Patent Law

As a follow-up to yesterday's post, I heard from Dale Carlson at Wiggin and Dana LLP on a more recent article he co-authored with Robert Migliorini titled, "Patent Reform at the Crossroads:  Experience in the Far East with Oppositions Suggests an Alternative Approach for the United States."  The article appears in NORTH CAROLINA JOURNAL OF LAW & TECHNOLOGY (VOLUME 7, ISSUE 2: SPRING 2006) and discusses reexamination in the context of a patent reform proposal called "post-grant opposition".  The article explains why we should work to improve the existing reexamination protocol rather than try to implement a new post-grant opposition regimen that has failed in other countries.

They write:

On September 1, 2005, Representative Lamar Smith introduced a ?Coalition Print? version of a patent reform bill (Substitute bill H.R. 2795) into Congress. That bill included a post-grant opposition procedure not later than nine months after grant. On April 5, 2006, Representative Howard Berman introduced the ?Patents Depend on Quality Act of 2006? (H.R. 5096 - the ?PDQ Act?) into Congress. The proposed PDQ Act includes a so-called ?second window? for bringing an opposition, namely within six months of the alleged infringer?s receiving notice of suit.

The concept of a post-grant review procedure has the support of the Director of the United States Patent and Trademark Office, Jon Dudas, and warrants consideration by the patent community at large. The authors submit that the form and substance of any such post-grant review procedure are critical elements to its success. The authors submit that the review procedure should not take the form of an ?opposition? protocol, but rather should be woven into the existing inter partes reexamination procedure.

Read the full article here.  Mr. Carlson also suggested "What's Really Happening in Inter Partes Reexamination," by Joseph D. Cohen of Stoel Rives LLP. An updated version of 87 J. Pat. & Trademark Off. Soc. 207 (2005).