post Monday January 7, 2013
There has recently been considerable debate regarding the potential of an appellate court having the ability to reach a conclusion that is different or opposite from the United States Patent and Trademark Office (USTPO). It appears as if there is some resolution to this issue, as an appellate court has reached a differing opinion by denying a ruling of patent invalidity.
A difference in the burden of proof leads to the differing verdicts. The key point that the USTPO and the appellate courts disagree on is the foundation to making a ruling on the validity or invalidity of a patent. The USTPO has a foundation that “no presumption of patent validity exists in a reexamining process.” Additionally, the USTPO evaluates the amount of evidence and information and if there is proof that the patent claim should be overturned.
While the USTPO has the expectation and assumption that patent validity is not automatically accepted in a reexamination, the appellate court stands in opposition. The courts assume that a patent is valid and the burden of proof rests in the party who deems the patent to be invalid. The court also has a high standard of proof in order to rule a patent to be invalid, stating that, “clear and convincing,” in order to declare a patent invalid.
Because of the stark differences in opinions and foundation, the USTPO and Appellant courts can reach different conclusions and rulings on the validity of patents. Practitioners can expect further disagreements in rulings in the future because of these clear differences.
Source: Vennable LLP
Image source: Free Digital Photos
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This is news? The PTO has long, in keeping with Federal Circuit precedent, reviewed patents before it on reexam without deference to its earlier decision. The theory behind this is that in reexam the patent can be amended. The provision on which courts accord deference to the earlier decision doesn't on its own terms apply to proceedings before the PTO, and claims can't be amended in court. That principle would probably apply at some level anyway, since a presumption of regularity applies to decisions of all agencies on review in court and expertise is granted deference by courts. Actually, this problem should diminish. Part of the reason for inconsistent decisions is how long it has taken the PTO to conclude reexams. The same standard will apply in post-grant reviews and the new inter-partes review, but those proceedings, unlike court proceedings, will be time-limited. So the PTO will finish sooner and claims will more likely be cancelled if they're going to be before courts reach invalidity issues.
Geplaatst door Jim Toupin op Tuesday 8 January 2013
