By Charles E. Miller, Senior Counsel, Dickstein Shapiro LLP and Daniel P. Archibald, Associate, Dickstein Shapiro LLP 

The March 4, 2010 "Managers' Amendment" of S.5152, the Senate's 105-page version of the pending "Patent Reform Act of 2010" - would, if enacted, do serious harm to the U.S. patent system by restricting a long-standing fundamental right of patent owners to seek judicial correction when the Patent and Trademark Office ("PTO") erroneously revokes a patent in a reexamination proceeding.

A patent applicant or the owner of a patent in an ex parte reexamination who is dissatisfied with the PTO's decision may seek review in either one of two courts. The availability of two different jurisdictional routes of judicial review of PTO decisions has long been an accepted feature of the U.S. patent system.

The PTO dislikes having to defend its decisions in District Court. As noted in the preceding section of this paper, the procedures in District Court make for a level playing field. Like all lawyers, the PTO's attorneys don't like to lose, even though their client is a government agency whose nominal goal is to see that the laws are faithfully executed, not to win cases, and one would think that their mission to see justice done would preempt their desire to build a favorable win-loss record. The Managers' Amendment would cancel the long-established statutory right of de novo review of decisions in ex parte reexaminations in D.C. District Court on an open record. What seems to be happening here is that the PTO is seeking, through lobbying and with little or no public fanfare, to put an end to an existing route of judicial review that, while odious to the agency, has always been vitally important to parties appearing before it. The Managers' Amendment subtly revises the statute that for many years has provided inventors with access to appellate court review of PTO decisions. Because the PTO is now attempting to circumvent current statutory provisions by abolishing civil actions in ex parte reexaminations altogether through legislation that will have catastrophic consequences, such legislation should be stricken from the current Managers' Amendment of S.515.

Download the full article to read more about how S.515 will limit the ability for patentees to seek correction of erroneous PTO decisions