The United States Patent and Trademark Office is expected to release, later today, its report on the inter partes reexamination procedure created by the American Inventors Protection Act (AIPA). The AIPA requires the Patent Office to report to Congress an evaluation of the inter partes reexamination procedure within 5 years of the enactment of the AIPA, which was signed into law on November 29, 1999.
A draft of the report, courtesy of Hal Wegner, is available here.
The report reflects suprise on the part of the Patent Office that anticipated numbers of filings under the new procedures have not been met. Importantly, the report considers the reasons for the limited use of the procedures and makes recommendations for statutory changes to improve the procedure. Perhaps most significantly, the report highlights the need for statutory change that clarifies the estoppel provisions of the inter partes reexamination system.
Perhaps most interesting, though, is the discussion regarding the post grant review procedures proposed in the Patent Office’s 21st Century Strategic Plan. The report states that “the proposed Post-Grant Review would provide a review model that is more comprehensive than, and different from, reexamination. Specifically, Post-Grant Review would provide a genuinely contested case presided over by panels of USPTO administrative judges.” (emphasis added)
The report offers Congress the suggestions of the Patent Office for improvement of the existing inter partes reexamination procedure, but it also makes it clear that the Office sees this procedure as a single component of a comprehensive post-grant review system.
Interestingly, the Patent Quality Assistance Act of 2004 (108 H.R. 5299) was introduced at the end of the 108th Congress, with a promise by a sponsor of the bill that it will be considered in the upcoming 109th. The bill includes an opposition procedure.
UPDATE: The Patent Office made the final version of the report publicly available later in the day.
