By Kevin E. Noonan, PhD

Partner, McDonnell, Boehnen, Hulbert & Berghoff

Post-grant review of patents is a feature of several of the world's most developed patent regimes. In contrast, express review immediately after grant has not been a feature of U.S. patent law. Instead, U.S. law provides for two different types of post-grant review (ex parte and inter partes reexamination) that permit interested third parties or the patentee to have a granted patent reviewed by the Patent and Trademark Office.

These different types of review have not reduced patent litigation to the extent expected and indeed have proven to be apt tools for defendants to delay incurring patent infringement liability, frequently when the patentee has limited resources that make it difficult to maintain both infringement litigation and Patent Office reexamination actions concurrently. Even the "cloud" on the validity of a patent caused by reexamination can be detrimental to activities, such as attracting venture capital, that are vital to the existence of start-up companies in areas like biotechnology.

The recently released "Managers' Amendment" of the latest patent reform bill (S.515) contains provisions for yet a third embodiment of post-grant review (PGR). This iteration resembles opposition proceedings that exist, for example, in the European Patent Office. The PGR proposed in the Senate bill contains provisions purported to be time-limited, expeditious, focused on improving patent "quality" and reducing unnecessary litigation costs. However, except for the first feature, these were all ostensible benefits of each of the earlier types of reexamination. Although the bill's PGR provisions appear to be aimed at reducing the potential for patentee harassment, the mere addition of yet another PGR protocol, especially without any limitations to existing reexamination procedures, raises the possibility of such harassment.

S.515, if enacted, would expose small companies and start-ups (traditionally the source of a great deal of innovation in the American economy) to increased risks to their intellectual property. Whether this outcome is balanced by better patent "quality" or more certain patent protection will only be appreciated when, and if, a patent reform bill such as S.515 is enacted into law.

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