On November 2, 2002, President Bush signed into law the Patent and Trademark Office Authorization Act of 2002. Representing
a second stage of amendments to the reexamination statutes, the Act facilitates challenges to a patent's validity by giving
third-party requesters a right of appeal to the U.S. Court of Appeals for the Federal Circuit and by broadening the scope
of material that may be considered by the U.S. Patent and Trademark Office in reexamination proceedings.
The recent amendments represent a further evolution of the reexamination procedures. An earlier round of amendments effected
by the American Inventors Protection Act of 1999 had addressed complaints that the ex parte reexamination procedures were biased toward patent owners, as third-party requesters could not participate after requesting
reexamination. The 1999 Act added an "Optional Inter Partes Reexamination Procedures" chapter to Title 35 to allow participation
by such third parties.
The inter partes reexamination procedures apply only to patents based on "original applications" (which the Patent Office has interpreted
as including continuations, divisionals, and continuations-in-part) filed in the United States on or after November 29, 1999.
The 1999 Act included an estoppel provision barring a third-party requester in subsequent civil litigation from challenging
the validity of a claim on any ground that the third party raised or could have raised during the inter partes reexamination proceedings. See 35 U.S.C. § 315(c).
Despite the enactment of the inter partes reexamination provisions in 1999, patent owners and third-party requesters remained on unequal footing. Although a patent
owner dissatisfied with a decision by the U.S. Board of Patent Appeals and Interferences could appeal to the Federal Circuit,
a third-party requester could not. This month's amendments rectify this disparity by allowing a third-party requester to appeal
to the Federal Circuit in inter partes reexamination proceedings commencing on or after November 2, 2002. The recent amendments do not substantively change the
estoppel provision, however.
This month's amendments also clarify what material may be used to raise a "substantial new question of patentability" to warrant
reexamination. Federal Circuit decisions had held that patents and publications that were before the Patent Office during
the initial examination could not raise "a substantial new question of patentability" to justify reexamination. See In re Portola Packaging, Inc., 110 F.3d 786, 791 (1997); In re Recreative Techs. Corp., 83 F.3d 1394, 1398 (Fed. Cir. 1996).
The new amendments allow a reexamination request to be based on patents and printed publications that the Patent Office previously
had considered. More specifically, amended Sections 303(a) and 312(a) now conclude, "The existence of a substantial new question
of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office
or considered by the Office." This broadening of material that the Patent Office may consider in granting or denying a reexamination
request applies only to determinations made on or after November 2, 2002.
With the passage of time, more patents arising from applications filed on or after November 29, 1999 will issue and be asserted
against alleged infringers. In light of the improved appeal rights accorded third-party requesters of inter partes reexamination, and in view of the relaxed standard for initiating reexamination, it will be interesting to see whether reexamination
is used with increased frequency in the coming months.
