TiVo Ruling Suggests Shift in Patent Cases
Posted by Sachin Garg on 1st September 2006 | Permanent Link
LAW.COM is running a story on a new trend with patent disputes getting shunted to the U.S. Patent and Trademark Office, which may signal the increasing role of that office. If the trend catches on, it could delay outcomes of patent disputes by years.
Some interesting excerpts:
If a case is stayed pending the outcome of the re-examination process, it could mean as much as a seven-year delay before a patent owner can go back to court to enforce their patent.
Congress created inter partes re-examination in 1999 to let third parties assert that a patent had been wrongly issued on an invention that was not truly original. It was touted as a better alternative to the director-ordered ex parte re-examination process. Unlike in ex parte, inter partes filers can participate in the re-examination and, like the patent owner, appeal the outcome.
Yet in six years, only 113 inter partes re-examination requests had been filed — all but eight of which had been granted.
Requests for re-examinations have also increased noticeably over the last three years. The growing popularity may mean defendants think they have a better chance arguing before an experienced patent examiner than a jury, Haughey said.
Right now, only patents filed after inter partes was established can use the process, but Congress is considering a bill to extend the process to all patents.