Kappos Confirmed

Posted on August 7, 2009 by Chun Ng

The Senate today confirmed the appointment of IBM's David Kappos to the position of Director, USPTO.  It is likely that Mr. Kappos will overhaul aspects of the USPTO's practice.

Judiciary Committee Chairperson Committee Chairman Patrick J. Leahy (D-Vt.) issued a statement that he looks forward to working with the new Director on patent reform.

See prior blog entries on Kappos' signals and IPReview article.

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New Commissioner of Patents?

Posted on June 18, 2009 by Chun Ng

David Kappos, IBM's assistant general counsel for intellectual property, has just been nominated to be the new Commissioner of the Patent and Trademark Office.   PatentlyO called it right last month.

Mr. Kappos has testified recently before Congress on patent reform legislation, though that was on behalf of IBM.  Whether or not those are truly his views or he was simply giving the opinions of IBM, we will soon find out if he is confirmed.  In his testimony, he mentions enhanced inter partes reexamination, enhanced third party submission of prior art, and "first window" post grant review.  These reforms will go a long way to improving the validity and quality of patents issued from the patent office. 

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Patent Reexamination - A Renaissance

Posted on June 3, 2009 by Chun Ng

When I began practicing nearly 20 years ago, the conventional wisdom was that an alleged infringer of a patent should VERY RARELY request reexamination in the U.S. Patent Office.  I think the reasons were many.  To list just a few:

  • The reexamination process back then was "ex parte", and once a third party requested the reexamination and submitted the papers to the Patent Office, the third party nearly always was completely shut out.  Furthermore, the patent owner could have several opportunities to lobby the Examiner on a one-on-one basis.
  • If the Patent Office decided to reconfirm the patent, the third party had no right of appeal.
  • Patent litigators just didn't trust the quality of the reexam process in the Patent Office and preferred to litigate in the courts the issue of validity

But then the tide began to very slowly turn in 1999 with the introduction of "inter partes" reexam.  A series of further law changes and internal Patent Office changes over the following decade has resulted, I believe, in the almost routine use of inter partes reexam by patent defendants.   So what happened?

  • 2002 law change to allow a third party requester to appeal adverse decisions of the Patent Office to the Federal Circuit
  • 2005 establishment of a central reexam unit (CRU) within the Patent Office.  The CRU is made up of experienced patent examiners who frankly really know what they are doing.
  • 2005 establishment at the Patent Office of "panel review".  This is a fancy way of saying that a few experienced Examiners are going to do a quality check before decisions go out. 

Not only are more reexams being filed, the preliminary statistics indicate that the "kill rates" in inter partes reexam are upwards of 70%! 

Given this, it is certainly no surprise the patent infringement defendants have been using the reexam strategy more and more.  The semiconductor field is no different.  Two well known patent enforcers in the industry, Tessera and Rambus have seen their patents thrown into reexam by various parties that are the targets of their licensing programs.  Furthermore, I have also seen evidence that courts are willing to stay litigation if a quick reexam request is filed in the Patent Office, though obviously this is very judge and district specific.   

 

 

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