A worthy patent reform's unintended consequences.
- Second, patent challengers do for the Patent Office what is potentially the most expensive and time consuming aspect of determining validity: finding the most relevant prior art. The technical people in the industry affected by a patent often have some of the best information relevant to whether the patent should be invalidated or narrowed. And those with sufficient motivation frequently find prior art references that patent examiners did not find, such as obscure foreign patents, old catalogs and user manuals and physical samples of earlier devices.
- Third, in presenting this evidence, challengers will be able to explain its significance in ways that may be helpful to the patent judges. The patent judges should be able to quickly deny meritless petitions, and not all proceedings challenges will result in patents being held invalid. But a robust post-grant review system really serves two goals: preventing harm caused by bad patents but strengthening and affirming rightly issued patents and in some cases limiting the invalidity defenses that can be raised in subsequent district court litigation.
The AIA’s promise of faster, easier ways to challenge issued patents
should have been particularly helpful to petitioners that are not
competing with the patentee in the same market and may not have
access to the district courts. These include public interest
organizations like Public Patent Foundation and the Electronic
Frontier Foundation, each of which learns from their members which
patents are the most troublesome. Challengers could also include
humanitarian organizations seeking to enhance the availability in
the public domain of drugs or other treatments for diseases and
other medical conditions.
In implementing the AIA, however, the Patent Office chose to pass on
some of the cost of the new post grant procedures directly to the
challengers in the form of sizeable filing fees. Unfortunately,
these high filing fees will deter some challengers from taking full
advantage of the AIA’s reforms, effectively depriving the Patent
Office of valuable information.
In comparison, in the European opposition system, one of the
inspirations for the AIA’s new post-grant procedures, patent
challengers pay only a nominal filing fee. The European system uses
the application filing fees charged to all applicants for patents
(which are higher than the corresponding fees in the United States)
to subsidize the cost of conducting opposition procedures for the
small percentage of issued patents that are opposed.
It makes perfect sense to divert some resources from pre-grant
examination of applications that may never mature into patents that
anyone other than the owner cares about, and use these resourc
scrutinize issued patents that have been identified as potentially
troublesome. By instead charging challengers high filing fees, the
Patent Office missed the opportunity to maximize public
participation and realize the full potential of the reforms enacted
in the AIA.
(Elizabeth H. Rader represents clients in patent infringement matters at the trial and appellate levels. She works in the Silicon Valley office of Alston & Bird LLP.